If you are trading or planning to trade in the United States marketplace, do not overlook the importance of trademark registration. The exclusive right to use a particular brand in the lucrative U.S. marketplace can mature into a competitive advantage of considerable value. Trademark registrations in the United States can provide protection at the state or federal level. As will be seen, there are substantial benefits to be gained from the federal registration option.

The alternatives

Before turning to the advantages of federal registration, it will be useful to briefly explore the alternatives, which are state trademark registration and common law protection for unregistered trademarks. For both of these types of protection, the trademark should already be in use in commerce in at least one U.S. geographic market (e.g. a state or city).

State level trademark registration is usually awarded by the Secretary of State’s office. Protection in each state is obtained by filing out the relevant forms and paying a fee. The mark is then lodged on the state’s register, which will dissuade many traders from using the same brand in that state and facing a legal dispute. Each state tends to have a slightly different application procedure, charge a different fee and subject a trademark to a different examination, due to variations in the applicable law. For example, not all states carry out a trademark search before registration. This means that the validity of the right cannot be presumed from the registration of a mark in such a state.

Common law protection for unregistered trademarks arises automatically where a mark has been used in commerce. It is an offence for another business to present its goods as being associated with your unregistered brand under U.S. trademark law. There are two important limitations on common law protection. Firstly, the protection will only extend to where the mark has been used in commerce as an indication of the origin of your goods or services. For many marks, this means that the protection will not extend throughout the United States (though this will obviously not always be the case). Secondly, this method of protection, like state trademark registration, entails a degree of uncertainty. Far from being able to presume the right to exclusive use of an unregistered trademark in the United States, a business proprietor will simply not know for certain that such a right exists until they have taken the matter to court. This is time consuming and expensive.

It should be pointed out that where a mark is only being used in a limited geographic market, common law or state law protection could certainly be sufficient. There is no need to obtain protection for use of the mark further afield if the business proprietor has no interest in doing so. Furthermore, if the business proprietor has never used their brand outside of the state in which it is protected, not only is this sort of protection sufficient, but it may well be the only option. If your business is actively looking to capitalise on the entire United States market, however (which is likely if, for example, you are a foreign business looking to expand), then you should consider filing at the federal level.

The advantages of federal trademark registration

Federal registrations are submitted to the United States Patent and Trademark Office (USPTO), where they will be administered in respect of the entire United States after completion of one application and payment of a single fee. Assuming that the application is able to progress without opposition (or that any oppositions received are addressed satisfactorily), the owner will enjoy the right to use their mark in the United States. They will not need to monitor each state level mark individually, submit a series of applications and renewals, or pay different fees.

A prospective trademark will be placed on a continuum by the USPTO, which ultimately determines the extent to which federal level trademark registration is advantageous. The lowest level of protection is granted to marks that are not inherently distinctive, or are descriptive, but are capable of distinguishing the goods or services of the registrant in the marketplace. Such marks are placed on the Supplemental Register. The main advantages to being on this register are the ability to sue infringers in the federal court, being able to cite the registration against third parties attempting to use or register a similar mark anywhere in the United States, and being able to claim the priority date of the registration in other countries for the purposes of building an international trademark portfolio. In addition, after five years, it may become possible to have the mark moved up to the Principal Register if it has acquired distinctiveness through a secondary meaning.

If the mark is deemed to be inherently distinctive, in addition to being capable of distinguishing the goods and services of the registrant from those of another, then it will be placed on the Principal Register. It is here that a number of significant advantages accrue to the owner (in addition to those that would be enjoyed on the Supplemental Register). Firstly, the owner enjoys a presumption of trademark ownership and validity, and the right to make exclusive use of that mark for the registered goods and services in the United States. This means that the business in question can make the necessary investments in order to accrue a strong brand with consumer loyalty, confident in the fact that no other party can free-ride on the resulting goodwill. Infringers are held by the law to already know about the registered mark and the rights it entails (whether or not they do in fact), entitling the registrant to damages.

Assuming that the trademark has been registered at the federal level, then the owner will enjoy these rights throughout the United States. Not only does this mean that potentially infringing acts in any U.S. state or city are easily restrained, but certain advantages also arise at an international level. For example, the trademark owner becomes capable of preventing imports from outside the U.S. by third parties (and therefore ensuring that their market position is not undercut by cheap imports), which is not possible with a state level mark. It also becomes possible to use the U.S. mark as a basis for going on to make a submission to the international system of trademark registrations (Madrid System).

Another issue to consider is that whereas state level and common law remedies tend to be quite specific, making enforcement in relation to similar goods or services marketed under your trademark difficult and uncertain, a federal mark has much broader scope. This means that if a related product or service goes onto the market in the U.S. under your mark, you will be able to prevent any damage occurring to the reputation of your mark. In a similar vein, the remedies that can be obtained against an infringer are also more wide-ranging. The U.S. will award considerable punitive damages against wilful infringers, giving the trademark owner treble the amount of their actual loss. Being able to take such a measure is likely to dissuade many potential offenders without the owner having to bear the costs of legal action.

To reinforce the deterrent effect, federal trademark holders are able to use the ® symbol, which state-level proprietors may not. This is a clear indication to would-be infringers that your position in the marketplace enjoys strong protection, and you are willing to take the steps necessary to effect that protection.

Next steps

It should be clear by now that a federal level registration in the United States can provide a useful way in which to develop and protect your market position in one of the most important economies in the world.

If you are considering filing for federal trademark registration in the United States (or state-specific protection), then RightGuard from Humphreys & Co. solicitors can help you. It offers a no-nonsense, click-and-buy interface to those looking to apply for trademarks anywhere in the world. Each country is individually priced, and can be paid for immediately through a secure online checkout. If needed, trademark owners are able to call on the support of an expert team of lawyers at any stage in the registration process.

Please click to obtain a quote and file for trademark registration in the United States.