Federal Trademark Registration: Non-Mandatory But Essential
One of the first questions a new business owner asks a Trademark Attorney is whether it is actually necessary to register a business, product or service or logo as a Federal Trademark in order to conduct business.
The short answer is: No.
It is not necessary to register your brand identity as a Federal Trademark. Whether you are engaging in business as a corporate entity, a general or limited partnership, or as a sole proprietor, you are registered to conduct business pursuant to the law of the state in which you are operating.
In Michigan, where our trademark registration law firm is located, a Corporation or LLC is registered with the State of Michigan to conduct business.
Other than with regard to the need to obtain an EIN from the Internal Revenue Service for tax and related purposes, there is nothing “Federal” about conducting business in Michigan. Or any other state.
That all said, why would you forego the protection of Federal Trademark Registration?
It is a cost-effective means of protecting the brand into which you surely invested start-up capital prior to opening up shop that will guarantee your use of your name or log across all 50 states.
Benefits of Federal Trademark Registration: A Summary
Federal trademark registration, even though not required for conducting business in any US state, carries with it multiple crucial advantages.
Enjoy a presumption of exclusive use of the trademark.
Once you register your name or logo as a Federal trademark, you enjoy a presumption of exclusive use of the trademark.
That means that any other person or entity using the mark will have an extreme disadvantage in Federal Court when you sue them for infringement of the mark.
If the other user of the trademark has not registered it with the USPTO and you have, they lose.
A non-registered user of the trademark would have to successfully cancel your registration with the USPTO before proceeding with any litigation of its own.
After 5 Years, You Can Declare the Trademark Incontestable
Once your trademark has been registered for 5 continuous years, you have the right to file a Declaration of Incontestability, which constitutes conclusive evidence of the validity of your trademark and your right to use the trademark in interstate commerce.
This is filed with your required Statement of Use Trademark Renewal.
It is a very difficult barrier for an adversary claiming you’ve infringed their mark to overcome.
You Have the Right to Obtain Trademark Registration in Foreign Countries
Once you have registered your name or logo as a Federal Trademark in the US, you have the right to register your trademark in foreign countries as well.
This is accomplished either via the mechanism of an international trademark treaty known as the Madrid Protocol, or directly, within the foreign country in which you intend to conduct business according to that country’s domestic trademark law.
You Can Request that US Customs Block Infringing Imports
With a registered trademark, you can request that US Customs block the import of infringing products.
Some guy in China selling wearing apparel with your tag on Amazon Marketplace?
With a registered trademark, you can stop his product from crossing our international boundary.
Your Ownership Is Publicly Viewable
When you register your name or logo as a trademark, your ownership is publicly viewable via the USPTO’s online TESS database.
This means that, in litigation, it will be presumed that your adversary without a registered trademark, had notice of your registration when engaging in whatever infringing activity that it did.
Again, this is a strong leg-up in litigation. Your adversary cannot purport to have made an innocent mistake as courts will view a failure to review TESS, at the very least, to have been unreasonable on the part of your adversary.
Only a Registered Trademark May Utilize the ® Character
Without a Registered Trademark, you are not permitted to attach the familiar ® character to your name or logo on packaging or in advertisements.
Registering Your Trademark: The Bottom Line
The bottom line is that with regard to the protection of your business name or brand, Federal Trademark Registration is essential.
It is also essential that retain a licensed US attorney to assist you.
A discount online form-filling service is not a licensed attorney. It cannot provide legal advice. It cannot file papers other than the basic application with the USPTO. It cannot respond to a USPTO office action refusal of your trademark application or engage in litigation on your behalf.
Hiring a knowledgeable trademark lawyer from the start will save
The Hilla Law Firm, PLLC will protect your brand and can assist with all of the steps required for trademark registration
We are located in Metro Detroit, Michigan, but our trademark practice is national.
We represent clients for US trademark registration worldwide.
Virtual consultations offered via Zoom with affordable flat fees.
Contact Us at (734) 743-1489 to schedule an initial consultation appointment to discuss your trademark needs.