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December 14, 2020

Do I Need a Trademark Registration?

Whether you are an individual or a business, if you offer products or services to others for a fee or for free, chances are you already have at least one trademark. However, owning a trademark and owning a trademark registration are two distinct items. While not mandatory, ownership of a trademark registration provides many advantages.

The benefits of a federal trademark registration are considerable. A trademark registration can serve as both a sword and a shield to protect and enforce an owner’s rights. The following non-exhaustive list identifies benefits of owning a federal trademark registration.

  • The exclusive right to use the registered mark in connection with the registered goods or services throughout the United States
     
  • The ability to sue for trademark infringement in federal court and, in certain circumstances, recovery of treble damages and attorneys’ fees
     
  • Nationwide notice of ownership, which can help to deter infringement issues
     
  • The right to use the ® symbol
     
  • The ability to record the trademark registration with US Customs & Border Protection (CBP) to assist CBP with identifying counterfeit or infringing goods others seek to import into the United States
     
  • A basis for filing for trademark protection in foreign jurisdictions

Trademark owners also have the option to file for trademark protection at the state level. The requirements and process to secure a state trademark registration vary from state to state and are generally less expensive and onerous than federal registration. It is important to keep in mind that a state trademark registration only provides protection in the state where registered, and the array of benefits afforded to a federal registration are not mirrored in a state trademark registration. While a state registration often issues faster and does not provide the same robust protections and benefits as federal registration, it can be a good option for mark owners in certain situations, especially in cases where a mark owner does not meet the use in commerce requirements for federal registration. Federal and state trademark rights are not mutually exclusive and do not provide protection outside of the United States.

Determining whether a federal or state trademark registration is better suited to your needs requires consideration of several factors. The attorneys in Barclay Damon’s Branding, Trademarks & Copyrights Practice Area can assist you in that determination and lead you through the process of securing suitable rights.

If you have questions regarding the content of this alert, please contact Liz Cominolli, Branding, Trademarks & Copyrights Practice Area co-chair, at ecominolli@barclaydamon.com; Katie Markert, counsel, at kmarkert@barclaydamon.com; or another member of the firm’s Branding, Trademarks & Copyrights Practice Area.

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