IP Tech Knowledgy

Trademark rights exist without federal registration by using a mark in connection with your goods and services.  Federal registration provides added benefits, the most important of which is nationwide rights. Trademark priority is based on the first to use a mark in a territory, and federal registration provides nationwide rights as of the date the application was filed.  However, a nuance dictates a registrant cannot stop an infringer until the two are operating in the same territory (read about the Dawn Donut Rule).

The registration system also provides the ability to file an application based on the intent to use the mark in the future, which creates an all-important priority date even before a business actually uses its mark. This filing date will be effective against any subsequent users, so long as the mark is eventually used and registered.

A registration also acts as a deterrent, because a different business intending to use a similar mark would likely search the online registry at the USPTO, see the registrant’s preexisting rights, and choose to use a different brand.

In the digital age, registration has added benefits not specifically included in the federal statute.  When fighting over domain names, the arbitration system that adjudicates disputes provides great weight to registered trademarks as opposed to common law trademarks that have been in use, but are not registered.  It is easier to stop a cybersquatter if you are armed with a registered trademark.  Social media policies also provide extra weight to registrations when determining if a third party is misusing the trademark owner’s brand.  Online retailers, most notably Amazon and its Brand Registry, encourage, if not require, entities to have registrations for their products to protect them in the online marketplace and verify their authenticity.  

If in doubt, register your trademark.
 

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com