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Trademark Tuesday Part VII: Registration Pros and Cons

Registering your mark with the USPTO can be great for protecting your mark, but also comes with some possible downsides. How do you know when and whether to register?

Benefits of Registering:

If you successfully register your mark with the USPTO, it gives you a lot of legal benefits that can help you protect your mark down the road.

Firstly, the registration process is very thorough, so if you succeed with your registration, you now have the confidence of knowing that your mark is not similar to any other registered trademarks. This means you can feel more free to market yourself, expand your brand, and spend money on things like packaging without having to worry that you’re accidentally infringing on someone’s mark and might get sued for it later or have to change your name.

Next, because trademark protection is given to the first person to use the mark, registration provides you with a legal assumption that you were the first one to use the mark. Registration also provides the assumption that you are the rightful owner, and that it is a valid mark. This means that if you get into a battle over who was using it first, who owns it, or whether it’s a good mark, the law starts out presuming you’re right, and the other side has to prove otherwise, which makes a lawsuit easier for you and harder for them. If it weren’t registered, you’d likely have to battle out all of these issues in court.

Registering the mark also gives notice to the world that it’s your mark and that it’s being used. This will prevent others from trying to use it. If someone uses it anyway, the law will now act as though they knew that you already own the mark (even if they were careless and didn’t actually know).

Once a mark is registered, you are also able to file a lawsuit in federal court. If you do end up in a federal suit, registration also provides you with certain financial damages and attorney fees that you may not have been able to receive if you weren’t registered.

If you plan to do business internationally, having a federal registration can also make it easier to register in other countries. And on the flip side, if you’re worried about other companies bringing in knockoff products from outside the country, you can file your registration with the US Customs Service to help protect against imported counterfeit goods.

Because of these benefits, registering your mark can end up saving you lots of time, money, and effort trying to enforce your trademark rights down the road.

Cons of Registering:

It isn’t all sunshine and roses, though, unfortunately. Registering — or attempting to register — can also have its downsides.

Just like a successful registration confirms that your mark is good, attempting to register a mark can also prove to you that your mark is bad. If your mark is descriptive, generic, or conflicts with someone else’s and it is rejected by the USPTO, you know have solid proof that it’s an unprotected mark. If you hadn’t tried to register, your use might have flown under the radar and you could have an argument that you believed it was a good mark that you were trying to protect. But if you tried and failed, you now can’t in good faith try to prevent anyone else from using your name, either. If you aren’t confident you’ll succeed, you might be better off not knowing at all!

Similarly, the notice that the USPTO gives that you’re attempting to register the mark can also come back to bite you. This notice might bring possible competitors out of the woodwork that may not have noticed, or cared, otherwise, and these competitors may decide to come after you and try to force you to change your mark. A thorough pre-registration search (hopefully with the help of a lawyer!) can minimize this risk, but there’s never a guarantee that your registration will go uncontested. This may put you in a position where you have to defend your mark, or even have to change your name.

The fees for registering can also be difficult for many small companies to pay. The filing fees per registration start at $250 per mark, per class. “Class” is the category of goods or services you are filing under, so depending how many marks you want to register (name? logo? slogan?) and how many categories (do you do/sell more than one type of thing?), those fees can add up fast. You are much more likely to succeed in registration if you have an attorney helping you, and attorney fees can be in the thousands. Even trademark searching software can be in the hundreds per search, and doing a good search is a requirement if you want to successfully register. If you aren’t confident you need to register your mark, these costs and fees may simply not be worth it.

Read the rest of the Trademark Series:
Part VI: Distinctive