Short answer: Yes and No.
Here’s why the short answer includes “no”:
One thing to know is that federal law does not by itself create trademark rights. Trademark rights are acquired when an individual or a company uses the distinctive mark in commerce.[1] So, if you have a trademark (brand name for your business, product or service) that you’re currently using in commerce, then you don’t necessarily need to obtain a federal registration. With that said, now let’s explore why it is a good idea to obtain federal registration for your trademark.
Here’s why the short answer includes “yes”:
First, who can apply for federal registration? The owner of a trademark used in commerce may apply for registration of its trademark with the United States Patent and Trademark Office (USPTO) by paying the prescribed fee and filing an application. Additionally, a person who is not yet using his or her mark in commerce, but has a bona fide intent to, may also apply for registration of his or her trademark.
Next, what are the benefits of federal registration? There are many benefits, including:
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Constitutes “constructive use” of the mark nationwide
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Basically, register and get national protection instead of regional protection – this is significant!
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Owners of a federally registered trademark can expand into new geographical territories without fear that a confusingly similar mark of another that was first used after the registered mark’s application date will be given priority
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Provides constructive notice of your ownership of the mark and serves as evidence of the validity of your registered mark
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This makes it easy and inexpensive for you to show others that you own the mark, which is important when you are looking to enforce your mark against potential infringers
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Provides the mechanism for your mark to become incontestable after five years of registration (provided that certain requirements are met[2])
It should be fairly apparent that the list of reasons to obtain a federal registration far outweigh the list of reasons not to. It is the prudent approach because your brand name (via your trademark) allows the public to associate a certain level of quality with your goods and services. It only makes sense for you to take all necessary precautions to protect that association.
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[1] “Because registration does not itself create trademarks, it is not mandatory and the ‘owner of an unregistered mark may still use [the mark] in commerce and enforce it against infringers.” Lodestar Ansalt v. Bacardi & Co., 31 F.4th 1228 (9th. Cir. 2022) citing Iancu v. Brunetti, 139 S.Ct. 2294 (2019).
[2] The incontestability requirements from 15 U.S.C. § 1065:
(1) there has been no final decision adverse to the owner’s claim of ownership of such mark for such goods or services, or to the owner’s right to register the same or to keep the same on the register; and
(2) there is no proceeding involving said rights pending in the United States Patent and Trademark Office or in a court and not finally disposed of; and
(3) an affidavit is filed with the Director within one year after the expiration of any such five-year period setting forth those goods or services stated in the registration on or in connection with which such mark has been in continuous use for such five consecutive years and is still in use in commerce, and other matters specified in paragraphs (1) and (2) hereof; and
(4) no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.