You can sell products or offer services in the United States without having a registered trademark. So you might ask, why should I register my trademark? There are several reasons why registering your trademark is a good idea.
Rights Throughout the U.S.
By obtaining a federal registration of your trademark, you can have more confidence that you have rights to use your mark throughout the entire United States, without worrying that your trademark rights will be limited because of someone else’s activities (because of that person’s common law rights in a trademark.). It is also wise to research whether someone else is already using a mark similar to yours by doing a comprehensive trademark availability search before applying to register your trademark.
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If you’re doing business in the US from another country, realize that in most countries, you secure rights in a trademark by filing an application to register that trademark. But in the U.S., you have limited rights in a trademark just by using it. That can be good, of course, but if someone uses a mark that is similar to yours before you start using your mark, then they could have rights that interfere with your plans in the U.S. Obtaining a trademark registration helps prevent this from happening.
Working with Your Distributors
If you plan to work with resellers or distributors to sell your products or services, having a trademark registration lets you control your own brand. Many times, a reseller who sells products or services, especially for an international company or one based outside the US, will register the trademark of the company for whom they sell goods. They may do this either in a good faith effort to protect the brand that they are selling for you, or they may want to pressure you to continue working with them.
Either way, if your reseller owns a registration for your trademark, you probably cannot force them to transfer it to you without a costly lawsuit. The better path is to register your trademark yourself before you begin working with resellers or distributors.
Help Securing Domain Names
Disputes about the ownership of internet domain names are common. For example, if you own the trademark LEATHERBACK and the domain name leatherback.co.uk, someone else may have registered the domain name leatherback.com before you. Many of these domain name disputes, including all disputes for .com domain names, can be resolved using the Uniform Dispute Resolution Procedure (UDRP). In some cases, a lawsuit in a US federal court is also used to seek a transfer of a domain name that was acquired by someone else in bad faith.
If you have registered a trademark that appears within a disputed domain name, the trademark registration provides evidence of your rights to the mark. Historically, the arbitrators who handle UDRP cases have looked very favorably on the owners of registered trademarks.
Enforcement at the U.S. Border
Owning a registered U.S. trademark entitles you to register your mark with the US Customs and Border Protection service. This is an easy process once you have a trademark registration. The Customs officers can then block goods from entering the US if they bear your registered trademark but are not authorized by you.
Consistent Use of Trademark Symbols
If you have registered your trademark in other countries, your brochures, products, website, and other materials may include the circle-R symbol ® to indicate the registered status of the trademark. You cannot use the ® symbol in the US unless your trademark is also registered in the US. The ™ symbol can be used without having a registered trademark. By registering your trademark, you can use materials that have a ® symbol, without the need to change materials to use the ™ symbol.
Enforcement in U.S. Courts
No one wants to deal with a lawsuit, but if someone is using your trademark without your permission, a trademark registration gives you several advantages in court. For example, instead of your being required to prove that your trademark is valid, the court will start from the position that that your mark is valid; the other side will have the burden of proving that your trademark isn’t valid. Also, US trademark law provides additional remedies for infringement of a registered trademark; in some cases of willful infringement you can receive monetary compensation or even repayment of attorneys fees.