Tanner Montague came to town from Seattle having never owned his own music venue before. He’s a musician himself, so he has a pretty good sense of good music, but he also wandered into a crowded music scene filled with concert venues large and small.But the owner of Green Room thinks he found a void in the market. It’s lacking, he says, in places serving between 200 and 500 people, a sweet spot he thinks could be a draw for both some national acts not quite big enough yet for arena gigs and local acts looking for a launching pad.“I felt that size would do well in the city to offer more options,” he says. “My goal was to A, bring another option for national acts but then, B, have a great spot for local bands to start.”Right or wrong, something seems to be working, he says. He’s got a full calendar of concerts booked out several months. How did he, as a newcomer to the market in an industry filled with competition, get the attention of the local concertgoer?
Get your federal trademark registration: Here’s why
One of the biggest mistakes new business owners make is assuming that filing their company’s name with the Secretary of State provides trademark rights. It doesn’t.
While the law does not require that you register your trademark federally or at the state level, there are several significant advantages available to a trademark owner who does federally register their mark with the United States Patent and Trademark Office (USPTO). These are five of the biggest advantages for your business.
Room to grow
Obtaining a federal trademark registration leaves ample room for your business to grow by preserving your right to use your trademark throughout the United States. To obtain a federal registration, you need to use your mark in interstate commerce. Although you are not required to use your trademark in all 50 states in order to obtain a registration, a federal registration will preserve the right to use your mark throughout the country. A federal registration will allow you to stop another party that is first to use a similar mark in a particular state after the filing date of your trademark application. That is, as long as you are able to show a likelihood of entry into the same geographic area and that your mark has sufficient notoriety in that area. In that sense, a party that begins using a similar mark for related goods or services after the filing date of your federal trademark application is living on borrowed time.
Without federal trademark protection, trademark owners still retain limited common law rights based on use of their trademarks. However, common law trademarks are protected only in the geographic areas where the trademarks are used in connection with the goods and services. For example, suppose you are only using your trademark on goods for sale in Minnesota. In that case, you would not have common law trademark rights in Illinois or the other 48 states. Consequently, someone outside of Minnesota could adopt a similar trademark and use it for the same goods or services without violating your trademark rights, as long as they do so in good faith without the knowledge of your trademark.
So, even if your business does not have a presence in all 50 states just yet, applying for a federal registration allows you to leave room for your business to grow. A federal registration will also help keep your brand secure nationwide. On the flip side, obtaining a federal registration may also save your company from potentially infringing on a competitor’s trademark that you may not be aware of. More on the importance of pre-branding searching at a later date.
Credibility
Obtaining a federal registration lends credibility not only to your company, but also to your brand as a whole. When competitors and consumers see the ® on the goods or services containing your trademark, it portrays an image that you are taking your intellectual property rights seriously and intend to enforce them to maintain your brand’s integrity. Once a consumer associates integrity with your company’s brand, they are more likely to assume that other products your company produces will have the same level of quality. There really is just no substitute for integrity in today’s wildly competitive marketplace.
Additionally, federal registration enhances your credibility with lenders. When a company seeks a loan or obtains capital, lenders and investors often view trademarks as important property assets worthy to serve as collateral. This is evidenced by the significant number of security interests recorded on federal trademark registrations with the USPTO.
Constructive notice
A federal registration provides nationwide constructive notice to others of a trademark owner’s rights in the trademark as of the application’s filing date. “Constructive notice” means that a potential infringer is deemed to be aware of your registered trademark regardless of whether or not they actually were aware of your registered trademark.
Constructive notice also relieves a trademark owner of the burden of having to prove actual notice. “Actual notice” means that an infringer was actually aware of an existing trademark. Unless an infringer admits to it, actual notice is tricky to prove until you are deep in full-blown litigation. As you might imagine, infringers admitting to actual notice is not very common. Constructive notice means that another party cannot adopt a confusingly similar trademark and escape liability by claiming they were not aware of a trademark owner’s rights. Without a federal registration, an infringer could claim that they were not aware of your trademark rights.
Enforcement assistance
During the prosecution of any federal trademark application, trademark examiners review the federal trademark database for similar marks that are used with similar goods or services. Once your federal application is on file, it will show up in examiners’ searches and they will cite it against potential competitors’ applications. Citing your earlier filing will often bar a competitor’s trademark from registering if the marks and goods/services are similar enough.
Additionally, once filed, your mark will show up in searches that competitors may run for new trademarks that they are considering filing or using. The USPTO and trademark searching vendors will inform the searching party of your rights, which puts the searching party on actual notice of your mark. This takes some of the enforcement burden off of your plate, allowing you to focus on things like growing your business or maintaining the integrity of your brand.
Litigation facilitation
Finally, obtaining a federally registered trademark can help your business have the upper hand in a litigation setting, should you need to deal with a copycat. Federal trademark law is well-established. Less guesswork means less attorney time assessing the strength of your case, which means lower legal bills for your company. Conversely, choosing not to obtain a federal registration will leave an infringement case potentially subject to different versions of state trademark law or common law. These variations can provide unpredictable outcomes. As with most things in the law, there is little to no certainty of any lawsuit’s result, but choosing the more proven route is always a better plan.
