Many people ask the question, “should I register my trademark with the United States Patent & Trademark Office?” Oftentimes, the question is in a slightly different form, such as, “should I apply for a trademark” or “should I trademark my company name?” It is common for people to use the term “trademark” as a verb. However, the first question above is perhaps the more accurate way to state the question. Regardless, seeking Federal registration of a trademark in the early stages of forming a company or naming a new product allows a company to develop protectable brands while avoiding pitfalls, such as infringement of another company’s mark. It is much less expensive to perform a trademark clearance search early in the naming process, than it is to rebrand a product line already introduced to the market, or worse yet to fight a trademark infringement claim pertaining to an established company name.

Federal registration of trademarks is not required, but highly recommended. Owning a federal trademark registration on the Principal Register provides a number of advantages, including: 1) a legal presumption of ownership of the mark and an exclusive right to use the mark nationwide in connection with the goods/services listed in the registration; 2) public notice of your claim of ownership of the mark; 3) the right to use the federal registration symbol®; 4) the ability to bring an action concerning the mark in federal court, rather than having to sue for trademark infringement in each individual state; and 5) the use of the U.S. registration as a basis to obtain registration in foreign countries. In my next post, I will discuss registration of a trademark at the state level. If you are interested in seeking federal or state registration of a trademark, you can give us a call for a free consultation at (503) 439-6500. Ted D. Karr, P.C., Partner, Berkeley Law & Technology Group, LLP. TM@bltg-ip.com