“If I can get a trademark just by using my mark to sell things, why should I register it?” We get this question a lot. It’s a great question. Traditional answers include how having a federal trademark registration gives you nationwide rights, and how it can provide benefits in litigation. As times have changed, however, another important reason has emerged.
Today, we do everything through the Internet. It has become our go-to source for many different activities. Want to learn something new? There’s probably a documentary or how-to video on YouTube that is right on topic. Want to look for inspiration for how to decorate for the holidays? Check out Pinterest. Watch a movie? There are lots of options on streaming services, like Netflix. Purchase a new kitchen gadget? Chances are, Amazon sells it. We do practically everything through the Internet.
As more of our lives became influenced by the Internet, how we do business has naturally evolved as well. Businesses advertise and offer their products and services through a variety of online channels. While many businesses have their own websites, many more offer their products and services through third party eCommerce platforms (examples include Amazon and eBay). Companies also interact with their consumers and prospective consumers through social media. For example, a business may have a Facebook page, Twitter account, and/or YouTube channel for these purposes. These types of social media accounts have been used to promote specials, address customer service issues, build community, offer demonstrations of products, and connect to a broader audience.
While the Internet offers businesses a lot of new opportunities, it can also lead to issues with trademark infringement. It does not take much effort for an infringer to set-up an account on a social media site with a name that is confusingly similar to a business’s trade name, or to start selling counterfeit products on an eCommerce site. This can create new problems. For example, trademark litigation can be expensive and not every Facebook page that wrongly uses someone else’s trademark may be worth the financial costs of trying to get the infringement to stop (especially if the infringer can simply make a new account with a little Internet trickery).
To address these types of problems, most third party platforms developed mechanisms that allow for trademark owners to monitor and enforce their rights. Typically, these programs work by requiring the trademark owner to search for infringement. If the trademark owner finds an infringing page or item on the third party platform, the owner can submit a report that identifies the trademark and the infringing use. The third party platform then reviews the report and, if it agrees that there is infringement, it removes the page or listing.
This is where having a federal trademark registration can be particularly beneficial. These online enforcement mechanisms are substantially easier to navigate with a federal registration. There is no need to provide a detailed argument to show common law rights, or for the provider to make a determination as to whether common law trademark rights have attached (and that is assuming that the third party recognizes common law rights; not all Internet websites do). A registration demonstrates that the trademark owner does, in fact, own the trademark. This allows these mechanisms to operate quicker and with less difficulty. Using their registrations, trademark owners can often address these issues by filling out a simple form with the third party platform and submitting it electronically. The end result is faster removal of infringing materials at lower costs for all involved.
While there is no requirement to federally register a trademark, companies that are eligible for federal trademark protection should strongly consider the many benefits – both traditional and emerging – for registration.
Have questions about trademark registration? Learn more about Michael Best’s Trademark team.