Is Registering a Trademark Mandatory?

Registering a trademark with the United StatesPatent and Trademark Office is not mandatory.  However, there are several advantages to registering a trademark.

Consumers often purchase products or services based on a trademark because they have heard the trademark mentioned by others or because they have seen advertising for the goods or services.  In the event a competitor uses the same or similar trademark, confusion among consumers may result, and the trademark owner with subordinate rights may be forced to change his trademark.  Years of investing in advertising and the goodwill associated with the trademark may be lost.

Registering the trademark with the U.S. Patent and Trademark Office confers upon the trademark owner a legal presumption of the trademark owner’s exclusive right to use the trademark nationwide on or in connection with the goods and/or services identified in a trademark registration.  This legal presumption means that the law already recognizes the registered trademark owner as the rightful owner, unless others can prove otherwise.

Additionally, registering a trademark with the U.S. Patent and Trademark Office serves to discourage others from adopting the same or similar trademark.  Many persons conduct a preliminary trademark search of the U.S. Patent and Trademark Office database before adopting a trademark.  If they discover that a trademark is already filed or registered, they may opt to choose another trademark that is not confusingly similar to one that is already filed or registered.  This could save a trademark owner thousands in potential legal fees by minimizing the risk of a future law suit resulting from two owners using the same trademark.

A trademark registration may also be recorded with the U.S. Customs Office to prevent importers from selling goods under the same or similar trademark.  Additionally, a registered trademark provides a trademark owner with the ability to bring legal action in federal court as trademark registered with the U.S. Patent and Trademark Office are governed by the U.S. Trademark Act (“Lanham Act”).


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