The Most Important Trademark Fact You Probably Don’t Know

Client: “I’ve been in business for a couple of years now, and I want to trademark my company’s name.”

Trademark Lawyer: “What do you mean you want to ‘trademark’ it?”

Client: “I want to get a trademark on it.”

Lawyer: “Do you mean you want your company’s name to be a trademark?”

Client: “Yes, how do I get that?”

Lawyer: “Congratulations. You already did.”

This kind of conversation occurs almost every time a client or prospective client calls a trademark lawyer for the first time. Most businesspeople do not know that by choosing a business or product name and using it in connection with providing goods or services to customers, they become trademark owners and acquire enforceable trademark rights. They think that they must “get” a trademark by filing an application with the U.S. Patent and Trademark Office (USPTO), and if the trademark they want is “available” some nice person at the USPTO will “grant” it to them.

In the U.S. Supreme Court’s opinion in Matal v. Tam (2017), holding a portion of the nation’s statutory trademark law unconstitutional, Justice Alito wrote: “It is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.” It certainly is not the way you “get” a trademark. To do that, you come up with a trademark—or brand or business name or product name or logo, call it what you will—put it on your product or use it to promote your service, and provide that product or service to your customers.

It’s a fundamental principle of U.S. trademark law that trademark ownership arises from using a chosen mark in offering and providing goods or services to the public. It’s critically important for people in business to know and understand that they are already trademark owners. Yet this process is widely misunderstood by businesspeople, by the news media who report on trademark disputes and invariably get the law wrong, and even by many lawyers who don’t practice trademark law.

Of course, it doesn’t help clear up this widespread misunderstanding when the USPTO itself includes on its website a section heading and link saying “Apply for a trademark”; or when the Trademark Trial & Appeal Board (which fastidiously insists on being call the “T-T-A-B” not the “T-TAB”) turns around and calls trademarks whose owners are seeking registration “applied-for marks.” Even the highest authorities are not immune from lazy uses of language that perpetuate and reinforce the public’s misunderstanding of what trademarks are and the difference between owning a trademark and registering it.

Client: “But wait—if I already have a trademark why do I need registration?”

Lawyer: “Actually, you don’t necessarily need registration. It’s not legally required. However, there are significant advantages to federal trademark registration.”

Among the benefits of federal registration are:

  • The presumption that your trademark is valid puts you in the best position to protect and enforce your trademark rights against users of the same or similar marks for similar goods or services.
  • You are entitled to use the “®” registered-trademark notice, discouraging would-be adopters of similar marks.
  • Your mark appears in the records of the USPTO and will be found by others who are searching to determine if they can adopt the same or similar mark themselves.
  • The USPTO will refuse registration to any later applicant seeking to register a mark too much like yours.
  • Registration entitles you to list your trademark with the U.S. Customs & Border Patrol, protecting you against the import and export of counterfeit and infringing goods.
  • Registration enables you to enroll your trademark in the Amazon Brand Registry and to better protect and enforce your trademark against online imitators.

The USPTO’s website is designed to enable trademark owners to file their own applications for trademark registration. However, it’s not a good idea to do so without first consulting a trademark attorney. The registration process is filled with traps for the unwary, such as properly identifying the owner of the mark, clearly describing the goods or services with which the mark is used, placing your goods and services in the proper class (out of 45 internationally recognized classifications), and paying the proper filing fee. In fact, businesses that do not have their headquarters or principal place of business in the United States are required to hire a U.S. attorney to apply for registration of their marks.