Registering your trademark is necessary; however, it is not required. Most people wonder whether there is a law that says you must register a trademark for it to be valid and for you to legally use it in commerce. We are always extremely careful when we answer this question because, as soon as we say, “Registering your trademark is not a requirement,” an unfortunately-large number of first-time trademark owners decide they will not register their trademark because “it is not necessary,” usually thinking with their wallets rather than their heads. We understand that as an entrepreneur, your budget might be tight. However, no matter how much money you spend on lawyers now, it will be considerably less than the amount you will spend trying to fix legal issues that could have been avoided in the future. Required and necessary, in the context of trademarks and intellectual property in general, are two vastly different things. Registering a trademark is not required by law; however, that does not mean it is not necessary. Trademark registration is indescribably essential when it comes to efficiently enforcing one’s trademark rights. Enforcing trademark rights without registration can be unreasonably challenging.
Section 7(b) of the Lanham Act provides that “A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.” The owner of a trademark who initiates the application process as an intent-to-use applicant will have the same rights, assuming the U.S. Patent and Trademark Office approves the mark.
Registering your trademark on the Principal Register means you do not need to provide your proprietary rights over the mark if you ever find yourself being involved in some kind of dispute. Having only common law rights over an unregistered trademark or registering a trademark only on the Supplemental Register means you will need to spend a lot of time and money to demonstrate you own the trademark before you can even attempt to enforce your trademark rights in a likelihood of confusion or infringement case.
If you choose not to register your trademark or register it only on the Supplemental Register, if a dispute arises, you will need to have acquired proprietary rights over the mark prior to the opposing party’s trademark application filing date. The appeal board will presume any trademark on the Supplemental Register is merely descriptive of the products and/or services described in the registration, unless the owner can demonstrate acquired distinctiveness, which can be overwhelmingly challenging, depending on the mark.
Is Registering Your Trademark Required? No. Is it Necessary? YES
Unfortunately, many first-time trademark owners fail to recognize the importance of trademark registration, and every single one of them pays the price for that mistake. If you are starting a business, building your brand is crucial; however, that is only the first step. Protecting your brand once you build it is just as important as building it. We have seen many great brands fall apart due to poor intellectual property protection strategies. We can help you prevent that from happening to your brand. Call Jurado & Farshchian, P.L. at (305) 921-0440 or email Romy@jflawfirm.com to schedule a consultation with an experienced Florida Trademark Lawyer. We will help you create a bulletproof intellectual property protection strategy for your business.