Do I Have To Trademark?

Today, I will be answering the question “Do I have to trademark?”  That is a question that prospective clients and clients alike ask on a regular basis.  The first thing that I always tell them is your question is not entirely accurate. The reason being is because you don’t have to necessarily do something in particular in order to have a trademark other than using a distinctive mark in interstate commerce, and those are the two requirements in order to acquire a trademark.  So, the question “Do I have to trademark?” sounds as if there is something you need to do beyond that, such as pursuing a registration with the United States Patent and Trademark Office, and I’ll get to that, but let’s start with those two requirements in order to have trademark rights.

As I’ve said, you need to be using a distinctive mark and you have to be using it in interstate commerce.  A distinctive mark is one that is more than merely generic or descriptive.  It is a suggestive, arbitrary or fanciful mark.  Those are legal terms of art that a trademark attorney can help advise you on as to what your trademark would qualify as.  The next requirement is you must use it in interstate commerce.  That means that you must use it not only within your particular city, like Tampa or Cleveland or Detroit, but you must use it outside of your state or interstate, meaning in more than one state.  Therefore, if you’re in Florida, you need to be using it in Georgia or South Carolina.  If you’re in California, you need to be using it in Ohio or Michigan.  Wherever you are using it outside of your particular state will be sufficient to qualify for interstate commerce.

What trademark law allows is rights to be claimed exclusively to the first person to make use of a distinctive mark in interstate commerce.  Therefore, a trademark attorney can advise you whether or not you would likely qualify for what’s known as common law trademark rights based upon that first use of a distinctive mark in interstate commerce.  And what I said just recently, common law trademark rights is something that you need to know the difference between that and what’s known as a registered trademark.  The first person to make use of a trademark in commerce gets what’s known as common law trademark rights.

In addition, they have the ability to enforce those trademark rights via a lawsuit in federal court under what’s known as the Lanham Act or in another court of law.  However, those that have actually pursued and achieved a trademark registration with the USPTO, or United States Patent and Trademark Office, have what I like to call super benefits.  And some of those benefits include, number one, the exclusive right to use that mark throughout the United States, even if you have not used it in a particular location.  It also provides the person owning and claiming rights to that trademark to use the registered ® symbol, as opposed to the TM symbol.  Only upon achieving a successful trademark registration can an owner use the registered ® symbol.  There’s also the super benefits of being able to recover attorney’s fees and also statutory damages up to $2 million per willful counterfeit or infringement of your mark.  All of those are important benefits that come into play if you need to enforce your trademark rights against another, be it in a cease and desist or threat letter or ultimately if you have to go to litigation in order to redress a trademark infringement.

So, the question, once again, do I have to trademark, be it your business name, your logo or your own name, isn’t exactly the question you should be asking yourself.  Instead, you should be asking yourself whether you have made use of a distinctive mark in interstate commerce.  If you have, then you likely have what’s known as common law trademark rights.  Then, the question you should ask yourself is whether you should pursue a trademark application in hopes of getting a trademark registered with the USPTO in order to have all those super benefits that I discussed.  Either way, a trademark attorney who has experienced in this area can advise you of your trademark rights, your likelihood of a successful trademark registration and what that would mean to your trademark rights.  Therefore, I always encourage prospective clients to consult with a trademark lawyer and get those answers before they move forward and invest in what is, more often than not, one of the most valuable pieces of intellectual property of a company.

So, once again, this has been Brian Hall answering your question:  “Do I have to trademark?”

You’ve been listening to Trademark Law Radio.  Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.