Trademark

弁護士

Technically speaking, you do not need to register a trademark. You can get common law trademark protection simply by using your mark in commerce. You still get the protection against someone setting up shop next door to your business, selling the same thing, calling themselves by the same name. If it comes down to defending yourself against someone else who does register a mark and tries to get you to stop using your name then you should (assuming you have factual evidence to back up your claim) be able to prove that you started using your mark before the other party, in which case you can carry on using your mark in the locations where you are already using it. But they will have presumptive rights everywhere else, preventing you from expanding beyond the immediate vicinity.

Why should you register your trademark? Rather than list all of the benefits of federal registration here are just a few. Federal registration gives you nationwide constructive use, which means that even if you only do business in New England you will have the exclusive rights to use your mark everywhere in the United States for the good or services your provide. Registering your trademark creates a legal presumption that you are entitled to use the mark. That means that anyone who wants to challenge your rights to the mark has the burden of proving that you were not, rather than you having to prove that you were. Registration establishes a priority date. That means that if a dispute arises between you and someone else using the same mark, or a confusingly similar mark, you will have a legally fixed date for the beginning of your trademark.

Protecting your marks with federal registration allows you to invest in building your brand. It is designed to protect your reputation by giving you greater protections than you would have under common law or state law. Registration fees charged by the USPTO are fairly minimal as business expenses go.

Whether you decide to register your mark with the USPTO or rely on your common law rights is entirely up to you. You don't need to register, but, in most cases, if you can you probably should.

弁護士

If you were asking about needing to register in the U.S., you have a great answer. If you are asking about the need to register in other countries, consult lawyers licensed to practice trademark law in the countries in which you are interested. Trademark law is territorial and only extends to the borders of the country unless your registration is with the European Union, which covers all 27 member nations, or another multi-country treaty (like between Belgium, Netherlands and Luxembourg).

弁護士

Perhaps the easiest answer to this question is that if you don't register it, someone else could! Not to be flippant, but that in itself is a good inducement to register your mark. Registering is not a particularly expensive process, and it makes protecting your mark much easier.

By your question, you seem to imply -- and quite rightly so -- that just by using a mark in conducting your business, you already have certain rights to that mark. That's quite true. You automatically have common law rights that accrue.

But registering your mark gives you more rights in federal law, and more leverage to go after infringers, if someone tries to use your mark or a confusingly similar mark.

Specifically:

(1) By registering, you are putting the public on notice that you are using a certain mark. So if someone is thinking about using a mark similar to yours, and they conduct a due diligence process prior to using the mark, they are likely to find your mark on file at the United States Patent and Trademark Office. This will likely dissuade them from using the mark. But even if it doesn't ...

(2) Registering your mark gives you access to federal courts in the United States, which is the appropriate venue to bring an infringement action.

(3) Also, if your mark is registered, you are more likely to obtain enhanced penalties against any infringers who use your mark, including treble damages and attorney’s fees.