Should you Register a Trademark with USPTO or Not?
Under US Trademark law both registered and unregistered trademarks are protected by law and courts. It is not necessary to register trademark with USPTO because brand name and logo automatically come under the umbrella of legal protection when a business implements the first transaction – also called acquired trademark rights.
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However, practically registered trademarks with USPTO enjoy some degree of better protection in US federal courts. The United States Patent and Trademark Office (USPTO) gets its powers to register trademarks from the Lanham Act of 1946. Another noteworthy benefit of registering a trademark with USPTO is that if no one else oppose the trademark in five years, it becomes incontestable even if it is a descriptive name – but after filing a form and paying fee to USPTO. Another advantage is that U.S. Customs Service will not allow import of goods having symbol of registered trademark.
In Canada and the US, if your trademark is not registered, you are still entitled to obtain remedies, but enhanced remedies are provided for a registered trademark – in case a competitor deceptively represent the goods and services of a business, causing customer confusion.
If a dispute arises between two companies over similar brand names, then most probably court will decide on the basis that who adopted and registered that brand name, first. In Canada, Germany and France, even the first filer will have more trademark protection. Therefore, it is a good idea to get your brand registered to save your company from the intrigues of your competitors, maybe in future.
On the other hand, registering a trademark is a costly process both in terms of money and time – current wait times for final approval are over a year. [RD] Trademark must also be renewed in US after 10 years, and in case of Canada after 15 years.
In both cases, to get legal protection a trademark should be the ‘FIRST’ in either being used by a business or registered.
Another important difference between the ‘first used’ and ‘first registered’ is that in use-case, automatic rights are only provided to a trademark in a particular city, geographic area, or state where the mark is used or intended to be used. However, when you register a trademark, it gets legal protection in the whole United States whether initially it is being used in a particular country. For example, you have registered a pizza restaurant with USPTO, and you are initially selling only in New York, but no one can use the same name in other city or state of the country.
A product or business name uses (™) symbol when it is not registered with USPTO. However, registered trademark sign (®) is used for products or marks after approval from USPTO.
An acquired (used) trademarks can be registered with USPTO at a later stage. A better strategy would be to apply an ITU in advance, then actually start selling your products or services until trademark gets approved.
Please note that it is important for trademark owner to continuously use it in transactions – continuous nonuse (usually three years) may lead to the loss of trademark rights.
Explore more articles about business BRANDING and brand naming ideas.
