All too often I hear clients and prospective clients alike question whether it is worth it to pursue a trademark registration or a copyright registration. They say “I have common law rights, isn’t that enough.” My answer is a resounding no.
Common Law Trademark
Common law trademark rights, at least under US law, go to the first person to use a trademark in commerce. Unfortunately, that common law right only extends to the geographic locations in which you have actually sold your goods or offered your services for sale. The problem arises when there has been concurrent common law use by two separate entities in different geographical locations. As you can imagine, with the ubiquitous nature of the Internet, trademark disputes regularly arise involving who was first and the scope and reach of the claimed trademark protection. While common law trademark rights are better than no rights at all, register your trademark with the United States Patent and Trademark Office (USPTO) so you get nationwide priority, among other rights. Put another way, filing a trademark application with the USPTO provides the applicant with prior rights throughout the United States even if it has not used the trademark throughout the United States, so long as the mark ultimately registers. Additional benefits of trademark registration include:
- deters unauthorized use of the mark, since others will search uspto.gov for use of the mark
- presumption of ownership in court
- presumption of validity in court
- incontestability after 5 years, so long as the necessary declaration is filed
- right to sue in federal court
- right to recover triple your actual damages plus attorney’s fees, as well as statutory damages in certain cases
- use of the ® symbol
- help from the U.S. customs service to avoid counterfeit products
- deters unauthorized use of the mark
- registration in other countries using the U.S. priority date
Common Law Copyright
Also known as the poor man’s copyright, common law copyright rights are granted to the creator of a work of art once it is fixed in a tangible medium. In plain English, once pen is put to paper, brush to canvas or music to track, you can claim a common law copyright. You can even use the © symbol. However, without a registered copyright with the US Copyright Office, you do not have the ability to sue in federal court. You also will not be entitled to the same statutory damages available under US law. Without these two things, you have very little leverage when it comes time to enforce your copyright rights against a copyright infringer. While you can always register your copyright after discovering the infringement, doing so reduces the amount of statutory damages available. Given the relatively inexpensive nature of filing for copyright protection at copyright.gov, why forego securing intangible property that could ultimately help with enforcement efforts should a dispute arise and even add value in the event of an acquisition.
In short, file early, file often and register your trademark and copyrights.