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Why Register Your Trademark? Comparing Common Law, State and Federal Law Process and Rights.

By Russell Pigg

Common Law Rights

Common law trademark rights are initiated when you begin to use a trademark in connection with your goods and services. 

You can use the ™ or SM symbols to protect your trademark and make others aware of it.

These rights are only within the geographic area in which you do business.

You can not enforce the trademark outside of that area.

Common Law rights can still be stronger than those from a registration if the common law use is from earlier than the registration, but it is up to the business to show the burden of proof.

Only state and local courts can be used to protect common law rights on trademarks.

Common law rights are the easiest and least expensive way to use a trademark, but come with the least protection.

With the growing world of e-commerce, it makes it difficult to protect your goods online with just common law rights.

State Registration

            You can register your trademark within a state which creates rights within that states’ borders.

There is no protection outside of the state lines in which you registered, but you can register in more than one state.

The benefit to state versus federal is that state is a quicker process as well as a smaller fee.

Some states have registration databases that keep track of registered trademarks, but others do not.

It is the responsibility of the owner of the trademark to prevent others from using it.

State registration makes sense for those that do business across an entire state, but do not cross state lines.

However, few businesses experience no interstate commerce at all.

Especially with the growing world of e-commerce, it is extremely rare for a business to have no customers across state lines.

Federal Registration

            Registering your trademark federally comes with the largest number of benefits, but unfortunately is the most expensive and time consuming option.

Federal registration gives you rights across the entirety of the US, including US territories.

The USPTO does not enforce these trademarks, however, so it is still up to you, the owner and user of the trademark, to prevent others from violating the trademark and pursue the violators if they do.

The federal registration on your trademark can last forever as long as you continue to use the trademark in commerce and show proof of the continued use.

Between the 5th and 6th year, the 9th and 10th year, and every 10th year following you must file your Declaration of Use to keep the trademark alive

The perks of federal registration:

●        The registration gives you both offensive and defensive rights in federal court, giving you the right to bring a lawsuit and protecting you when one is brought against you.

●        A federally registered trademark allows you to use the ® to inform others of your trademark

●        Customs protection from importation of infringing counterfeit goods

●        After 5 years of continuous use with the federally registered trademark, it becomes incontestable, meaning it cannot be challenged on the validity or ownership of the mark.

●        The federal registration puts your trademark into the federal registered trademark database, which notifies others looking for similar trademarks.

●        The Lanham Act from 1946 created statutory damages for violations of federally registered trademarks. The statutory damages are at a minimum $1,000, but can reach up to $2,000,000 depending on the type of goods or services sold by the infringing business.

●         If you want to file your trademark in a foreign country, the federal registration gives you a basis to do so under the Madrid Protocol for all 124 cooperating countries. Each country’s trademark office reviews the application themselves, so registration in that country is not a guarantee, however.

●        Amazon and other large online marketplace companies will perform takedowns of infringing products when a trademark is registered federally. You can use the Amazon Report Infringement Page to report infringement on your trademark from products on Amazon’s site, and Amazon will decide whether or not to take the infringing product down.