There are millions of trademarks floating around the United States and the world. These marks help consumers identify different products and know, with certainty, which brands they can trust. A trademark is any word, slogan, symbol, design, or combination of these that identifies the source of your goods and services and distinguishes them from the goods and services of others. In the United States, trademarks are either registered with the United States Patent and Trademark Office or they are left unregistered. Registering a trademark can be a daunting undertaking that will likely require the help of a lawyer. Being the owner of a registered trademark guarantees certain rights and privileges while holding only an unregistered mark limits the reach of the trademark protection.
A registered trademark is simply a trademark that has been registered with the United States Patent and Trademark Office (USPTO). In order to register your mark, you must apply to register with the USPTO. The registration process includes a search by the USPTO for similar marks already in use on similar products and services. Once trademark registration is successfully granted, there are certain benefits and recourses for infringement that kick in. A registered trademark allows for a legal presumption of mark ownership as well as a legal presumption of exclusive right to use the mark. Additionally, a registered trademark puts the public on notice of ownership, lists the mark in the USPTO’s database, allows for recording of the mark with U.S. Customs and Border Protection, gives the mark owner the right to bring legal action concerning the mark in federal court, the owner can use the U.S. registration as a basis for foreign registration, and allows the use of the federal registration symbol.
One of the most persuasive arguments in favor of registering your trademark are the potential remedies available if someone infringes on your mark. Infringement is “the unauthorized use of a trade or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.” In order to prove trademark infringement, a plaintiff will have to show that the mark is a valid and legally protectable mark, that the plaintiff owns the mark, and that the defendant’s use of the mark causes a likelihood of confusion. When there is suspicion that a mark has been infringed on, a registered mark owner can file suit in federal court. Because the mark is registered there is a presumption of the validity and ownership of the mark and an exclusive right to use the mark nationally, so mark registration makes proving the case of infringement significantly easier for the plaintiff. If the plaintiff is able to prove an infringement action, there are several remedies available including an injunction that the defendant stop using the mark, an order requiring the destruction or forfeiture of infringing articles, monetary relief, the defendant’s profits, any damages sustained by the plaintiff and costs of the action.
An unregistered trademark or common law mark is essentially the same thing as a registered trademark except that the owner did not register the mark with the U.S. Patent and Trademark Office or a state trademark office. Another notable difference between a registered and unregistered mark is that an unregistered mark does not receive the same protections as a registered mark. An unregistered mark can only be enforced within the geographic area where it is used in commerce. The first user of the mark will have priority over other users. Much of the inquiry of infringement of unregistered marks revolve around the use element of infringement. Additionally, unregistered marks are not afforded the presumption of validity and ownership given to registered marks which can make an infringement action more difficult for the unregistered mark owner. If the owner of an unregistered mark is successful in an infringement action, the owner may be limited to an injunction against the infringer.
Registered and unregistered marks, at their core, encompass the same idea; they are any work, slogan, symbol, design, or combination of these that identifies the source of goods and services and distinguishes them from the goods and services of another party. Where the two diverge greatly is the protections offered and recourse available to each if an infringement occurs. For registered marks, among other things there is legal presumption of mark ownership, legal presumption of the exclusive right to use, and it puts the public on notice of ownership. For unregistered marks, there is no legal presumption of ownership and exclusive right to use. Protection is limited to the geographical area in which the mark is used. Upon proof of infringement, registered mark owners have several remedies available to them such as injunction, an order requiring the destruction or forfeiture of infringing articles, monetary relief, and costs of the action including attorneys’ fees. For unregistered marks, injunction is usually the only remedy available to the owner of the infringed mark.
Although registering a trademark can be a lengthy and potentially costly process, the benefits of having the trademark registered are great and could be the difference between winning an infringement action.
Are you a small business experiencing trademark headaches? Contact us today as Whitcomb, Selinsky, PC has a team of experienced trademark attorneys ready to help you today.