Do I Need To File A Trademark?

business law entrepreneur healthcare law practice practice management Dec 19, 2024
 

If you're a business owner or entrepreneur, the question of whether you should register your business, course, or program name as a federal trademark with the United States Patent and Trademark Office (USPTO) might have crossed your mind. It’s a common topic, and at Origins Incubator, where we host weekly legal, clinical, and business office hours, this question recently sparked an insightful discussion. Here's what you need to know.

Understanding Common Law Trademark Rights

First, let’s clear up a common misconception: you don’t necessarily need to register your trademark federally to have rights to your name. Once you start using a name in commerce (assuming it doesn’t infringe on someone else’s existing mark), you automatically acquire common law rights. This means you can use the name in your specific industry and service area without requiring federal registration.

For example, if you operate a local bakery called "Sweet Treats" and begin advertising and conducting business under that name, you own the common law rights to "Sweet Treats" in your geographical area. However, these rights are limited to your immediate region and industry.

The Case of Burger King: A Lesson in Trademark Law

One of the most famous examples of common law rights in action is the Burger King case. Before the Burger King franchise from Canada registered its trademark in the U.S., a small restaurant called "Burger King" in Indiana (or Illinois) had already been using the name locally. Because of their prior use, this small restaurant retained the exclusive rights to the name in their area, preventing the larger chain from operating or advertising within a specific radius of the original Burger King.

When Federal Trademark Registration Makes Sense

If you want to expand beyond your local area, sell products nationwide, or protect your brand on a larger scale, federal registration is worth considering. A federal trademark offers several benefits:

  • Nationwide Protection: Your mark is protected across the entire country, not just your local area.
  • Legal Recourse: You gain stronger legal rights to enforce your trademark against potential infringers.
  • USPTO Safeguards: The USPTO conducts searches when new trademarks are filed, potentially rejecting applications that conflict with your federally registered mark.

The Costs of Federal Registration

Trademark registration can cost between $1,500 and $2,000, depending on factors such as searches, filing fees, and responses required from the USPTO. It’s a worthwhile investment if your business operates nationwide or if you’re producing content like books, online courses, or educational programs. However, navigating this process is complex, so it’s highly recommended to hire a professional trademark attorney to ensure accuracy and efficiency.

What Happens If Someone Else Registers a Similar Name?

One concern we often hear is what to do if someone else registers a name similar to yours. Rest assured that your common law rights protect you if:

  • You were the first to use the name in commerce.
  • The other party’s use conflicts with your established business in your service area.

The USPTO will likely reject or provisionally approve their application if it overlaps with your rights. If disputes arise, having a professional on your side can make navigating these situations much easier.

In Summary: Do You Need to Register Your Name?

If your business or program is local and limited in scope, federal registration may not be necessary. However, for national or online operations, or if you’re investing heavily in building a brand, federal registration can provide peace of mind and robust protection.

By simply using your name in commerce, you already gain legal rights to it in your service area. But for broader security and to prevent others from using your name nationwide, consider registering with the USPTO. 

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