Christmas may be over, but somewhere Santa is already back to work: making his list, and checking it twice. But don’t let Santa hog all of the good ideas, making a list is good advice for companies and their trademarks, too.
The Lanham Act provides a number of benefits for registering trademarks: constructive notice, nationwide rights, presumptions of validity, and others. These are excellent reasons to register your trademarks with the U.S. Patent and Trademark Office (USPTO). Another benefit that is not expressly enumerated, but perhaps just as important, is the ability to let the USPTO enforce your trademarks for you.
Yes, you read that right. If you have a trademark registration, the USPTO will do your work for you, at no extra charge! Of course, you can’t just call them up and ask them to do something. However, once you have an application on file, the USPTO will cite your application (and eventual registration) against any later-filed applications for confusingly similar marks (confusingly similar in the eyes of the particular trademark examiner). In order to get the full advantage of this benefit, though, your registered rights should encompass all of your common law rights because the USPTO only considers active registrations and applications on file with the USPTO. It does not consider common law marks in the examination context.
For example, the Broadmoor, a resort near Colorado Springs, has been in business for nearly 100 years. The company registered its BROADMOOR mark in connection with hotel services, spa services, recreational services, and a number of other services as well. The company also sold a number of Broadmoor branded clothing items, but it did not register its BROADMOOR mark in connection with clothing.
In August of 2014, the company was surprised to learn that the J. Crew company had begun selling a line of Broadmoor clothing (website shown below). 
Broadmoor sent a letter requesting J. Crew to cease use of the mark but, as you can see, J. Crew did not comply. As a result, Broadmoor filed a lawsuit alleging trademark infringement just last week. It’s also worth noting that the Broadmoor filed an application to register the BROADMOOR mark in connection with clothing last August, likely right before it sent its letter (better late than never!).
Luckily for the Broadmoor, J. Crew hadn’t applied to register the BROADMOOR mark in connection with its clothing items. Had this occurred, it is possible that the application would have been approved for registration, even though the marks and the goods are identical. But having an application or registration on file would likely have prevented J. Crew from obtaining a registration.
As we’ve mentioned previously though, the USPTO deals only with the right to register a mark, not the right to use a mark. Consequently, Broadmoor would still have had to take action to get J. Crew to cease using the BROADMOOR mark. But simply having a trademark registration on file may have been sufficient to avoid this issue. Many companies will perform preliminary clearance (or “knockout”) searches before adopting a mark for their collections to determine whether there are any obvious issues. While trademark law is often a gray area, it is difficult to disagree that a registration for BROADMOOR in connection with clothing would have constituted an obvious issue. Simply having a registration on file may have allowed the Broadmoor to avoid the problem entirely.
So take a cue from the man in red. Make a list of your trademarks, your goods, and your services. If you don’t have registrations to cover everything (at least the important stuff!), then you should strongly consider updating your trademark registration portfolio.
And it doesn’t even matter if you’ve been naughty or nice, the USPTO doesn’t care.