Should I register my trademark with the USPTO?

Should I register a trademark with the US Patent and Trademark Office (USPTO)?

Our take: If you’re actively using your mark in commerce, you’ve built strong brand awareness and/or your business operates in a highly competitive industry, then registration is worthwhile. If your operations are at an early stage, you’re still developing your core product and/or your business has minimal commercial activity, then you should think twice before proceeding with registration.

You should keep a few considerations in mind.

Registerability

Ensure that your mark is actually registrable. If your mark has a high likelihood of confusion with an existing registered trademark or a non-registered mark in your industry, then USPTO registration is not worth pursuing. Instead, our advice is to find a new mark. Perhaps using a unique made-up word or combination of words to build a distinctive name to stand out and avoid confusion – think Google, Xerox, IKEA, Kodak, which are all household names today that began as made-up words.

Common Law Protection

In the US, using your mark in commerce grants you automatic but limited protection without USPTO registration. These limits include protection confined to only the geographic area in which you do business and a higher burden of proof that you are entitled to protection if you seek to enforce your trademark rights.

Still, for some startups this common law protection is sufficient and acts as a hedge against uncertainty. If your startup has minimal brand awareness or your goods and business are evolving, then USPTO registration may become a waste of time, money and effort.

Need for Enforcement

If you’re in a competitive industry with little differentiation or you expect your brand will be a critical asset, then USPTO registration makes sense. USPTO registration provides for nationwide public notice and priority that, unlike with common law protection, typically provides protection across the US – even in geographies where you haven’t done business yet. Enforcement is also easier because you have USPTO evidence of your mark’s priority.

Trademark law and strategy is nuanced and complex, so USPTO registration requires careful consideration. If in doubt, make sure to consult with a knowledgeable attorney.