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Trademark Protection By Use or By Registration

The U.S. Patent and Trademark Office (USPTO) defines a trademark as a "word, phrase, symbol, or design, or a combination thereof," used to identify and distinguish a company's goods. A service mark is essentially the same thing but pertains to services rather than goods. Your mark (either trademark or service mark) is legally protected through common law once it goes into commercial use, but sometimes it makes sense to register your mark. Not only does it establish a legal presumption of ownership of the mark and puts other parties on notice, but registration with the USPTO also makes it easier to obtain trademark protection in other countries.

The following information will help you better understand the differences between trademark protection by use and trademark protection by registration. See FindLaw's Trademark section for related articles and resources.

Trademark Protection by Use

You can establish rights in a trademark based on "legitimate use" of the mark. This protection arises automatically, from actual legitimate use of a mark for business or commercial purposes. Trademark rights that arise from use (rather than from registration) are sometimes referred to as "common law" trademark rights. Generally, the first to either use a mark in commerce or file an intent to use application with the USPTO has the ultimate right to use and registration. Disputes can arise if more than one person or business claims "common law" rights to a mark, so taking additional steps to protect your rights to a mark (such as registration) can be more effective than relying on "common law" rights only.

If you have not registered your trademark, you may use the TM symbol to declare your trademark (SM for a service mark). As you will see below, registration of your mark with the USPTO affords additional protections and assurances.

Trademark Protection by Registration

While trademark protection arises automatically from legitimate use of the mark, registering a trademark offers additional protections for the mark's owner, particularly additional protections from infringement. At the federal level, owning a federal trademark registration provides several advantages, including:

  • Constructive notice to the public of the registrant's claim of ownership of the mark;
  • A legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  • The ability to bring an action concerning the mark in federal court;
  • The use of the U.S registration as a basis to obtain registration in foreign countries; and
  • The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

If you have registered your trademark, you may use the ® symbol wherever your mark appears, which has the affect of warding off would-be trademark infringers.

Need Help with Trademark Protection? Call an Attorney Today

Most businesses have some sort of intellectual property worth protecting, whether it's a trademarked name or symbol or a valuable trade secret. It's not always necessary to register a trademark, but an attorney can help you understand the risks and benefits associated with your mark. Call a trademark law attorney today for a consultation.

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