Whether to register your trademark with the United States Patent and Trademark Office (the “USPTO”) can be a vexing decision for any business trying to stretch every dollar. Very often, a trademark or slogan will proceed through time unmolested without any need for defense. However, if another business infringes on your mark, then registering your mark beforehand was one of the smartest and most responsible things you’ve ever done.
If you own a small storefront in a small town, then registering your trademark with the USPTO may not be an option: you have to make “proper trademark use” of the mark. With proper trademark use, you can claim common law rights without registration. The upside of common law trademarks is that they don’t incur any additional expense beyond putting it out there in the ordinary course of business. The downside is that common law trademarks are only enforceable within the geographical area where you offer your business’s goods or services. If, for example, you offer your landscaping services in New Jersey, you cannot stop another business from using your common law trademark in Pennsylvania. In fact, should a dispute arise, you may be required to prove sales in New Jersey on a county-by-county basis.
Along these lines, common law trademarks can be geographically constrained. Following the same example, if you offer landscaping services in New Jersey under your trademark and a Pennsylvania landscape company files to register the same trademark, you will be restricted to providing services within your existing geographic area, never to expand, for as long as the Pennsylvania company maintains its federal registration. Yes: as a prior user of the same mark, you can’t be stopped from continuing in your geographic area. But heaven forbid you become successful and get queries from outside your present area!
A step up from common law trademark is state registration. Some states allow the business name filing to double as a trademark. (Of course, such registries don’t account for slogans or symbols used in your branding.) Others, like New York, have separate trademark registries. State-level trademarks are less costly than their federal counterparts and allow you to claim the entire state as your territory.
If you have consumers across state lines, you could theoretically register your trademark in those two or three states separately. However, the cost-effectiveness changes: applying for trademarks in two or more states is likely more costly than simply filing at the federal level. Once you have consumers purchasing your goods or services across state lines, you have entered interstate commerce, which is regulated by Congress, thus qualifying you to apply for federal registration with the USPTO.
A registered trademark with the USPTO offers protection throughout all 50 states, exclusive to you. Even if your mark is registered out of a New Jersey business with consumers in your state and Pennsylvania, you can stop a large company in Los Angeles from registering or beginning to use the same mark. Federal registration has other benefits. In court, you have the presumption of a legitimate trademark, as well as access to claiming treble damages and attorney’s fees. You can also use the ® symbol (as opposed to the superscript “TM”). There are additional advantages on the international level, such as expanding your exclusive claim over the mark in other countries and recording with U.S. Customs and Border Protection.
In short, not everybody needs a federal registration. However, I’ve had several local businesses call me, including restaurants and clothing stores, anxious about another business that used the same mark for the same goods or services. Often, these local businesses have been using the mark longer, but the newcomer has a much more robust marketing campaign. Too bad. If the local business and prior user had obtained a federal registration, we could stop this unfair competition with a cease-and-desist letter; without a federal registration, the local business can engage in costly and uncertain litigation on a common law basis, or just hope that there’s never any confusion among shared consumers.