Do I need to trademark my company’s name?
I often get calls from clients or prospective clients asking me whether their companies “have to” register their trademarks. In fact, many people assume that trademark rights do not exist unless the trademark is registered with the United States Patent and Trademark Office or through a state government [typically the secretary of state]. No federal or state law requires a company to register its trademark with a governmental entity in order to have a protectable interest in a trademark. As long as the trademark is actually being used in conjunction with goods or services, the owner of the trademark has certain limited rights in the trademark, including the ability to prevent someone else from using a confusingly similar trademark in the owner’s geographic area.
The better question is whether the trademark “should” be registered. Many businesses spend years and thousands of dollars to develop an association between the goods and services offered and the consuming public. In certain instances, one-third or more of a business’ value can be directly tied to the value of its trademarks. With an asset that valuable, it only makes sense that an owner would want to take whatever steps necessary to protect it.
While it is true that common law rights provide certain protections, the protections afforded a federally registered trademark are much broader. Some of the benefits of a federal registration include: 1) giving nationwide priority to the mark, as opposed to protection in a limited geographic territory, 2) acting as a bar to the registration of competing trademarks that are confusingly similar, 3) discouraging others from attempting to capitalize on the trademark owner’s goodwill and reputation, 4) giving the owner the right to file an infringement action in federal court and providing access to heightened damage standards, 5) acting as a presumption of ownership and validity of the trademark, and 6) giving the owner the right to use the ® symbol.
The process to register a trademark with the USPTO is relatively simple and inexpensive. Considering the risk that a business takes if it fails to protect its trademark rights through a federal registration, the minor investment can pay extraordinary dividends.