Four Reasons Why Registering Your Trademarks Should Be on Your “To Do” List
February 5, 2020
When you started your business, you likely spent thousands of dollars developing your brand name and image. So, it is important to protect them. A trademark is essentially a brand name that appears on products, or a company name for services. In other words, a trademark assures the purchaser that a product or service comes from just one source. For instance, when consumers see the name McDonald’s, they know that the restaurant is run by The McDonald’s Corporation, and not some other company. Consumers also understand that every restaurant branded with the McDonald’s name has a uniform level of quality. A McDonald’s restaurant in Florida will be substantially the same as a McDonald’s restaurant in Alaska.
The first reason to get a federally registered trademark is to put the world on notice of your rights. Your trademarks represent part of your company’s goodwill and reputation. A federally registered trademark is a public record. If the U.S. Patent and Trademark Office grants you a registered trademark and you use the registered symbol after your mark, it is difficult for an infringer to claim it didn’t know about your trademark rights.
The second reason to register your trademark is to afford yourself remedies so you can stop competitors from using similar names to confuse consumers. When you trademark your brand name, the U.S. Patent and Trademark Office grants you the sole and exclusive rights to that name in all 50 states. The registration certificate provides evidence of the trademark’s validity and your exclusive ownership. If a competitor uses a brand name that is similar to yours, and consumers are purchasing their products or services instead of buying yours, then you need a mechanism to stop them. A federally registered name gives you that right by allowing you the right to sue competitors using confusingly similar brands in federal court. If the infringement occurred after the trademark was registered, a court can award you money damages. In some cases, a court can triple this amount and order the infringer to pay your attorneys’ fees for the lawsuit if the court finds that the infringement was willful.
In addition, a company that federally registers its brands gets preferential treatment in domain name disputes. We are in the Internet Age and there are over 1.7 billion websites currently active. One of the most significant reasons to file for federal trademark protection is to ensure the greatest degree of protection for your domain name. The World Intellectual Property Organization calculated that in 2019, domain name arbitration panels sided with the federal trademark owner 91.8% of the time.
Finally, a registered trademark is a company asset. As such, it can be sold, licensed, franchised, or mortgaged. Business investors or business buyers will want to see that you have taken the appropriate legal steps to protect your brand.
Given the many advantages of obtaining a federal trademark registration, there is no doubt that obtaining one is a good return on investment.
The contents of this Alert are for informational purposes only, and do not constitute legal advice. If you have any questions about this Alert, please contact the Shulman Rogers attorney with whom you regularly work or a member of the Shulman Rogers Intellectual Property Group.