You settled on a trademark strategy to brand your goods and services with one mark that is unique and protectable. You believe that there are no other marks like it in the countries in which you would like to market. You have already started to use the mark in fact in connection with your goods and services, and so, this is the moment you've been waiting for. You're on the cusp of filing for formal trademark protection. But take one moment before you dive in. Formal trademark protection is not always necessary or appropriate. Yes, it's a relatively inexpensive and quick process to register a trademark at least as compared to patent. But there are many, many marks that go abandoned in the United States because they never should have been filed in the first place. So, ask yourself a few questions before you file that application. First, is your product consumer-facing? Do you make lollipops or do you make a specialized component for air conditioning units that you sell directly to air conditioning manufacturers for them to install deepen their machines before they sell them to the public? If you make a business to business product, there's less of a need for you to brand your product carefully, and if there are no competitor selling similar products to yours, especially if your product is sold as a component that's used deep inside somebody else's product, it might be a waste of time filing for trademark protection. Because trademarks are designed for consumers to use a source identifiers. If consumers do not need to know about your product, you may not need to protect your brand as a trademark. Another question, are you aware that your trademark won't protect you against others practicing the ideas or special methods that drives your company's inventions, and that your trademark can protect your company's written products or assets? Trademarks are powerful, but they can't substitute for patents or copyrights. You should only file to protect a mark, if safeguarding the name of your goods or services is an important and in itself. Another question, have you absolutely finalized the form that your mark will take, whether it's going to be a wordmark or design mark or a wordmark plus design? Have you started or will you soon start to use the mark in commerce? Once you file an application, you can't change or even slightly alter the mark without starting over with a new application. You can't get writes until you are actually using the mark in commerce since the United States as a used-based jurisdiction. Final question, do you have enough money to obtain and then keep the trademark registration? It's going to cost from several 100 to several thousands of dollars to file your trademark application, and it will cause more money at the 5-year and 10-year mark after registration and then every 10 years thereafter for the whole remainder of the trademarks life. If any of the answers to these questions are no, remember that you can accrue trademark rights just by using the mark in commerce regardless of whether you register. Those rights are called common law rights and they do give you significant rights. They give you the ability to stop later use of the same or similar marks in the areas in which you have used the mark, or a zone of natural expansion where you're going to naturally use the mark in the future, and they give you the right to continue to use and exclude others from using your trademark in the areas in which you have already used it, even if there are later filers of the same or similar marks. This may be enough for a business to business product or appropriate if the mark is not set in stone. In most cases, you're going to need to enforce those common law rights in state court and you have to rely on your use as evidence of your rights. But assuming that the answers to my questions are all yes, you get more rights if you register. You also have two options as you decide to register. You can either file with one of the state trademark offices or with the federal USPTO. State trademark coverage is helpful and appropriate if you do not and will not use outside of the state. It gets you more rights than you receive from common law use alone. An example of a good candidate for a state trademark might be a small mom and pop pizza parlor. Unless the parlor is selling pizzas across a state border, in another state, they would likely not engage in interstate commerce which is a requirement to file for federal trademark rights. State registration gives the owner trademark protection within the border of the state. You can exclude others from using a same or similar mark in other states. The advantage of state trademark is that it is cheaper than federal trademark registrations and gives you more rights than common law rights. It's also easier to go through the registration process in the state version rather than the federal version, but again it grants more limited rights. You can enforce those state rights in state court under state law. Your final option is to federally register with the USPTO. This is appropriate for any mark that is used across state lines. For example, if you make goods and services available over the Internet where citizens of several states can access them. Federal registration grant some great additional rights. What are they? They are several. One, the right to use the encircled or after your name, which is great because it helps to deter others from using your mark. Second, it gives you the ability to exclude others use of same or similar marks nationwide. Third, it gives you a listing on the USPTO database, which provides nationwide notice of ownership and use which again deters other would be users of same or similar marks. It gives you the right to enforce in federal courts. It gives you what we call prima facie evidence basically showing your ownership and your use and also that your mark is not confusingly similar to other marks, which definitely helps if you ever have to go to court. Speaking of court it also gives you additional remedies if you have to enforce your trademark rights. You can get profits, damages, costs for infringement, and sometimes even attorney's fees or enhanced damages. So, it's powerful. It also provides evidence that your mark is functioning as a trademark. It also helps you to enforce against bad actors without having to file a lawsuit at all. If the infringing uses online and the online service provider has takedown policies, for example, or if you need to stop infringing import, those companies and bodies often need proof of federal registration before they will help you. Once you have a federal registration for five years, you can get even more rights by filing for something called incontestability, which makes it even easier to enforce and defend your mark. All in all, common law rights grant some protection, state registration grants more protection, and federal registration grants the most comprehensive rights. If you have the right kind of branding that is appropriate to protect the registration at all, and you make your goods and services available across state lines, it's likely worth it for the additional rights you get to apply for federal registration.
