Trademark Registration is not required in order to have trademark rights. But registering your trademark gives you some advantages. Trademark Registration Attorney Brian Hall provides an overview of the prerequisites needed to obtain a valid trademark registration with the USPTO.
- The benefits of achieving trademark registration are many, including: nationwide priority, easy identification, deterrence, presumptions, and the availability of statutory damages.
- The return on investment for trademark registration is potentially huge as names, marks and brands continue to achieve high market value.
- Without registration, your trademarks will be much more difficult to protect from infringement.
Today’s program is brought to you by the attorneys at Traverse Legal, PLC, a global law firm specializing in Internet law, Trademark infringement and trademark registration. If you have a legal matter arising on the web, contact one of Traverse Legal’s internet lawyers today.
JOHN: What is a trademark?
BRIAN: A trademark is basically a word, symbol, or a phrase used to identify a particular manufacturer or a seller's products or whatever good they're producing. There are two areas of trademark law. The first being state law and when we're talking state law, obviously, it could be Michigan, New York, California,Texas, Florida, etc. And then there's federal law, known as the the Lanham Act which is a piece of legislation that is strictly dedicated to trademark law.
JOHN: And how does someone know if they have a trademark?
BRIAN: The moment someone starts offering goods or services to the public under a name or brand, they have trademark rights. If you see a small "r" in a circle, that's showing that the owner has a trademark and, in fact, it is a registered trademark. A trademark is a way for a company to distinguish themselves from another company.
JOHN: How does someone go about obtaining a trademark registration?
BRIAN: First thing that you really need to know about that is there's really two ways that you can establish a trademark for yourself. When we're talking about trademarks, a person/individual can own a trademark, a company or an organization can own a trademark. In order to get a trademark, you have to be the first to use a particular mark in commerce. And when we say in commerce that simply means you're selling something under that mark. The second way that you can get one is really what I want to talk about here today. And that's doing a filing a trademark registration with the United States Patent and Trademark Office. By filing with the USPTO, you're automatically given the benefits of the federal law. Try to work with a trademark registration attorney who can help you put together the information that's required by the USPTO.
JOHN: What's the difference between a trademark and a patent or even a copyright?
BRIAN: A trademark identifies a particular manufacturer or sellers products and allows them to distinguish their product or their service from someone else's. A copyright is an original work of authorship. So a music composition is an example of a copyright. A patent is an original and innovative invention or process.
JOHN: Now I also have a name for my music or my website, for that matter, www.bfbmusic.com. Would "BFB Music" be considered a trademark?
BRIAN: The first question you need to ask when you're looking at a trademark is: number one is it distinctive? So if you go out there and there's a bunch of other people using BSB Music, then most likely it's not distinctive because it's not capable of identifying the source of a particular good, namely you're services and the music you're providing.
JOHN: Now, we're talking trademark law today, and we've been talking about how to get one, what it is, and how people know they have one. Now, why would I want to have my trademark registration filed with the USPTO?
BRIAN: The top 5 reasons you would want to trademark is pretty straight forward. First, registration gives the mark owner nationwide priority. Registration gives you a priority date if you are considering filing in another country. The second reason trademark registration is important is identification in the market. Consumers will identify your brand with your product or service. So, it really forces the trademark holder to be held accountable for the product or service that that trademark or service mark represents. The third reason that I say is it provides public notice that you are claiming trademark rights. which is very important because others will have a better chance of staying clear of your registered trademark. I talked about earlier how if you see the McDonald's sign you see the small "r" with a circle around it showing that that person has a registered trademark. That puts someone on notice that they can't go out and use the same trademark to sell hamburgers, or french fries, milkshakes, etc. Fourth, registration provides certain presumptions under trademark law. When you file a trademark, and the USPTO allows it to be registered, you receive a presumption of validity and the potential for statutory damages. By having a trademark filed with the USPTO, you may be entitled to treble damages plus attorney fees for bad faith infringement. Treble damages mean three times the actual damages that you sustained by somebody infringing upon your mark, or diluting your mark, or taking your mark and using it as part of their domain name. So, to review, - You get nationwide priority, easy identification, notice, presumptions, statutory damages and other treble damages.