Registered trademark and legal protection
What legal protection does a registered trademark offers?
Once you start using your trademark in connection with your goods and/or services you become a trademark owner. Nonetheless, the rights gained with your use will be limited. To increase your rights, you will need to register your trademark in relation to the goods and/or services that you are now using or that you will use.
What is “common law rights”?
Common law rights are the most basic rights you can obtain once you start using your trademark in connection with your goods and/or services. They are very limited rights applicable only to the specific geographical area in which you are providing your goods and/or services. If you want broader rights in a bigger geographical area you will need to register your trademark.
Where to register?
A mark can be register in different registers depending on where it will be use and the kind of legal rights that the owner wants to obtain. The most limited register in which a trademark can be filed is the state register.
State trademark registration
Registering your trademark with the state in which you are performing business creates rights in that state only. Also, it is important to understand that not all states have trademark registration databases, which means that third parties will not be aware of your rights. If you want to obtain rights nationwide you will then need to register your trademark federally.
Federal trademark registration
To register your trademark at a federal level you need to register it with the U.S. Patent and Trademark Office, commonly referred to as the USPTO. This will create rights throughout the entire United States and its territories and includes your registration in their publicly accessible database of registered trademarks.
What other benefits can you receive by filing your trademark federally under the USPTO?
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Your trademark will be listed in the USPTO’s database of registered and pending trademarks. This provides public notice to anyone searching for similar trademarks. They will see your trademark, the goods and services on your registration, the date you applied for trademark registration, and the date your trademark registered.
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Legal presumption that you own the trademark and have the right to use it. So, in federal court, your registration certificate proves ownership, eliminating the need for copious amounts of evidence.
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You can use your registration as a basis for filing for trademark protection in foreign countries.
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Right to bring a lawsuit concerning the trademark in federal court.
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May use the federal trademark registration symbol, ®, with your trademark to show that you are registered with the USPTO. This may help deter others from using your trademark or one too similar to yours.
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Option to record your registration with U.S. Customs and Border Protection. They can stop the importation of goods with an infringing trademark.
International trademark registration
A worldwide trademark registration does not exist. This means that if you need protection in a geographical area broader than what the USPTO offers you will need to search the registration of the different areas and/or countries to which your trademark will be used and individually file for them. Nonetheless, there is a register that can register your trademark in multiple countries. It is the Madrid Protocol. This international treaty allows you to file a single application that can then be applied to any of over 100 member countries, if you meet the legal requirements for registration in those countries.
“Why walk when you can dance?”— Ellen van Dam
