Trademark Registration and its Effect on Litigation
A strong trademark can be a powerful tool for a company looking to expand its market share and build strong ties to its consumers. Trademarks allow consumers to instantly recognize a company and remember all the good, or bad, things they know about the company. From time to time, keeping a trademark strong may require enforcing it against an infringing competitor. Many businesspeople worry about doing this because they never got around to registering the mark with the United States Patent and Trademark Office (USPTO). Fortunately, a lack of trademark registration does not sink a trademark infringement suit. Mark holders acquire certain common law rights just by using their mark in relation to their business. That said, mark holders should still consider registering their marks because of the added benefits registration brings during a litigation.
Common Law Trademark Rights
A company with a mark that has not been registered still has the ability to prevail in a trademark suit, though this ability is more limited than a company with a registered mark. A company can have common law rights in a mark if it can demonstrate “actual and continuous use in commerce.” This means that the company has been using the mark in connection with its goods and services. Courts will examine an array of factors to determine if the mark has acquired common law rights, such as how widely distributed the mark is and whether members of the public associate the mark with the company’s goods or services.
If the company does have common law rights, then they can use them to stop other companies from using the mark, but only in the geographic area where the mark is currently in use. In fact, common law trademark rights can even supersede the rights of a registered mark in certain circumstances. Suppose a company has been using a mark for a long time in a geographic area, and then another company registers the mark and tries to move into that area. The prior user’s common law rights may allow them to repel the registered mark in the geographic area where the mark was being used.
The Benefits of Registration
Despite the fact that a company can defend their mark adequately in many cases without relying on the benefits of registration, registration still comes with many advantages that companies may want to take use. For instance, registering a mark with the USPTO expands the geographic reach of the mark from where it is actually in use to the entire United States. This can be a powerful tool, especially for a company whose long-term strategy calls for expanding into new markets. Additionally, companies with a federally-registered mark have the possibility of accessing extra remedies like statutory damages, and treble damages for willful infringement of the mark. Federally-registering the mark also creates a presumption of validity for the mark, which can make it more difficult for a competitor or an opponent in a lawsuit to take away the mark holder’s rights.
If you believe that your trademark is being infringed and you would like to assert your rights, reach out to a Florida trademark attorney at Pike & Lustig, LLP today. Our firm is here to help you understand your rights and your possible options.