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Maximizing Trademark Rights without Obtaining a Registration

There’s often good reason to register one’s trademark.

That’s true at the state level, as well as expanding one’s rights nationwide by obtaining a federal registration.

But there’s also a case to be made for not registering a trademark. For one thing, it doesn’t cost anything. And because trademark rights in the United States arise from use, registration isn’t needed to get enforceable rights.

Here are a few strategies trademark owners should consider to maximize their common law (unregistered) rights:

  • Choose a protectable trademark. This is both offensive and defensive. The stronger (typically less-descriptive) the mark is, the more you will be able to enforce your rights against confusingly similar uses. And the more unique your mark is, the less likely a third party will claim that you have infringed its prior rights. Not so if you adopt a common or “popular” trademark. (Tips on selecting a protectable trademark here.)
  • Use your trademark as a trademark. This isn’t as obvious as it may seem (see post here). To get trademark rights, you need to use your mark as an identifier of source. That means you need to use it on the article or container (if the mark is used to sell goods), or on your Web site or at the point of sale (if the mark is used to sell services). The use should be prominent (i.e., large font, placed front-and-center) and should tell consumers that what’s being sold comes from you.
  • Put third parties on notice. Using the ® symbol tells third parties that you have obtained a federal registration. The owner of an unregistered trademark can communicate a similar message — that it claims rights in a trademark — by using the “TM” symbol. The subtext is that competitors and potential competitors should keep their distance, because you will enforce your rights if they adopt a confusingly similar mark.
  • Judiciously enforce your rights. You don’t need to go over-board (something trademark bullies don’t understand), but you should not let later-adopters use confusingly similar marks in your market space. The key is the definition of “confusingly similar.” That’s a technical term, but it usually boils down to the similarity in the parties’ marks, the similarity in the parties’ goods or services offered in connection with the marks, and similarity in the parties’ distribution channels. If a competitor adopts a mark that looks and sounds like yours, in connection with the same type of goods or services that you sell, and does so in a way that exposes its brand to the same types of consumers that are exposed to your brand, there’s a significant risk that consumers will mistakenly buy from the later-adopter thinking they’re buying from you. If you allow a likelihood of confusion to exist for a long time (sometimes measured in months rather than years), you risk giving up your trademark rights. That’s not to say you need to sue every trademark owner that comes close to your mark. You’re allowed to pick your battles. But you may not be able to enforce your rights against even a blatant infringer if you unreasonably allow a likelihood of confusion to exist for too long.
  • Don’t lose your rights through sloppy licensing. If you license your mark, you need to exercise your right to control the quality of goods or services being licensed. Since trademarks tell consumers that what’s being sold is of consistent quality as other items sold under the mark, your failure to exercise quality control can be deemed a “naked” license and can result in forfeiting your trademark rights. (Discussion of example case here.)
  • Strengthen your mark through marketing. A brand owner can convert a technically weak trademark (such as a descriptive mark) into a functionally strong one through length of use, advertising, and sales. Think SEATTLE’S BEST COFFEE. That’s technically a weak mark because it is descriptive. But years of use, lots of money spent on advertising, and lots of coffee sold has converted the mark for practical purposes into a strong, protectable brand. You can do the same if you’re wedded to a descriptive mark.

These ideas apply whether you want to register your mark one day, or whether you’ve decided you’ll never need the benefits of registration. However, this list is by no means exhaustive. I’m curious to know if anyone can think of other tips an owner can use to maximize its rights without registering a trademark.

Posted on November 27, 2011 by Registered CommenterMichael Atkins in | CommentsPost a Comment

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