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Are you Legally Required to Federally Register Your Trademark?

By Staff

Johnson and Phung PLLC
Patent and Trademark attorneys
General patent and trademark Information


Topic Covered
1. Federally registering a trademark provides more geographic trademark protection.
2. Federally registering a trademark provides ability to sue in federal court
3. Federally registering a trademark provides notice to others that you own the trademark
4. Federally registering a trademark provides Trademark Proof of Validity.

In the United States, the Lanham Act governs trademark law, including usage, monitoring, and protection. Although registering a trademark with the United States Patent and Trademark Office (USPTO) is not mandatory, it provides a number of important benefits and additional protections. Despite not being legally required, registering a trademark is strongly recommended. The following highlights the differences between the protections offered by an unregistered trademark and those gained through federal registration.

Reason #1 to Register a Trademark: More geographic trademark protection.

By using a trademark "in commerce," even if it's not registered, you can establish local trademark protection for your trademark in the area where you're selling or offering your product or service. This means that if another business tries to use a similar name for a similar product in the same area, you have a strong legal case to stop them. However, this protection doesn't typically extend to other regions, making it difficult to stop a competitor with a similar name. To gain more leverage and stronger protection, it's recommended to register your trademark with the USPTO. This provides you with national protection, a stronger case, and the assumption of nationwide ownership, giving you the advantage in any potential infringement cases, no matter where the infringing party is located.

Reason #2 to Register a Trademark: Ability to Sue in Federal Court

With an unregistered trademark, you may have the right to take legal action in federal court if you meet specific criteria, however these requirements can be challenging to fulfill, forcing you to resort to taking action in state court. On the other hand, if your trademark is registered with the USPTO, you have automatic access to sue in federal court and potentially recover damages resulting from any infringement.

Additionally, if you want to receive protection from Customs and Border Patrol (CPB) against counterfeit goods being imported into the country, having a registered federal trademark is mandatory.

Reason #3 to Register a Trademark: Provide Notice to Others that you own the Trademark.

Having an unregistered trademark makes it more difficult to enforce your rights against other businesses with similar names. You must prove your priority, which can be challenging, and other businesses may not be aware of your trademark unless you notify them. On the other hand, a federally registered trademark serves as national notice of its existence and is listed on the USPTO Principal Register. This information is accessible to new companies, their attorneys, and USPTO examiners. The presence of a registered trademark makes it less likely for another business to register a similar mark, and if they do, the USPTO examining attorney will reject it, effectively advising the potential infringer to change their name.

Reason #4 to Register a Trademark: Proof of Validity.

A trademark that hasn't been registered can still be protected through its use, but only if it meets the standards of being a valid trademark under the Lanham Act. This can be difficult to determine without being knowledgeable in trademark law. By registering a trademark with the USPTO, the validity of the trademark can be confirmed, and the national ownership of the trademark is established. In the case of unregistered trademarks, it becomes the responsibility of the owner to prove their trademark rights, which can be a challenge.

Registering a trademark can provide numerous benefits and it's never too late to do so. Common law protections have limitations and obtaining the advantages of a federal trademark registration can be highly beneficial for any business.

*** Please note that the above information is only general information and should not be considered as legal advice. If you need specific legal advice regarding patent law or trademark law, feel free to reach out to the attorneys at Johnson and Phung for a free initial consultation at our “Contact Us” page at ***

Johnson and Phung PLLC
We are a Twin Cities patent law firm and Twin Cities trademark law firm that has been committed to helping clients with their Patent, Trademark, and Intellectual Property Law needs in Minneapolis, St. Paul, the Twin Cities metro area, Duluth, Mora, Rochester, Mankato and all of greater Minnesota for over 40 years. All of our Minnesota patent attorneys and trademark attorneys are registered patent attorneys with each having over 20 years of experience."

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