Do I Need to Register My Trademark?

Using your mark gives you some local rights. Federal registration buys you protections you cannot get any other way. Whether it is worth it comes down to your budget, your growth plans, and how much the name is worth to the business.

What you get just by using the mark.

In the United States, trademark rights start with use, not paperwork. The moment you sell goods or services under a name, you have common-law rights in it. You can put TM, or SM for a service, next to the mark without filing anything or asking anyone.

The catch is that common-law rights reach only as far as you actually do business. If you only sell in your local city, your rights only cover you there, not nationwide. Common-law rights are also harder to prove in court. In the legal community “harder” is pronounced: “mor x-pen-sive”. When someone copies you, you have to show where and when you used the name, which turns into a fact fight. And if a competitor federally registers the same mark before you do, you can end up boxed into the small area where you can prove earlier use, while they take the rest of the country.

TM versus the registered symbol

TM means you are claiming rights in the mark. Anyone can use it, registered or not.

The R-in-a-circle symbol means the mark is federally registered. Do not use it until your registration actually issues. Using it early is improper and can be held against you later, including as a reason to refuse or challenge the mark.

What federal registration adds

Registering with the U.S. Patent and Trademark Office gives you things common-law use never will.

Nationwide priority as of your filing date, not just the corner of the map where you operate.

A legal presumption that you own the mark and that it is valid, which flips the burden onto the other side in a dispute.

Access to federal court and a stronger set of remedies.

A path to incontestable status after five years of continuous use, which cuts off many of the arguments someone could otherwise use to attack your mark.

Practical leverage. A registration deters copycats, lets you record the mark with U.S. Customs to block counterfeit imports, and unlocks brand-protection programs on the major online marketplaces.

State Trademarks

Each offers their own trademark registrations. These are cheaper and faster than a federal filing, but they only protect you inside that state and carry far less weight. State registration can make sense for a genuinely local business but most founders skip this and go straight to federal registration.

Secure Your Name Before You Launch

If you have settled on a name but have not gone to market, you can file based on a genuine intent to use it. Do it right and your priority can date back to the filing, not the launch. For a founder sitting on a name during a long build, that head start is worth real money. This also protects from having to re-brand in the future. There’s nothing worse than having to change your brand name, after receiving a cease and desist letter that could have been avoided with a little research beforehand.

Should you file a Trademark yourself?

We file trademarks for a living, so feel free to take what I say with a grain of salt. That said, our honest answer is that while some trademarks can be very straightforward, there are real advantages to having counsel do this for you right the first time.

First is that your application is more likely to be accepted. A study of roughly 5.5 million applications found that 82 percent of applications filed by attorneys won preliminary approval, compared with 60 percent of applications filed by people representing themselves. When an application hit a problem and drew a formal objection from the examiner (which is not uncommon), attorneys prevailed for their clients 72 percent of the time. Self-filers made it 45 percent of the time.

Source: Deborah Gerhardt and Jon McClanahan, "Do Trademark Lawyers Matter?", 16 Stanford Technology Law Review 583 (2013), available here. See also Deborah Gerhardt and Jon Lee, "Lessons from USPTO Trademark Prosecution Data," 112 The Trademark Reporter (2022), available here.

Filing yourself could make sense depending on whether the mark is distinctive or made up, you are in a single product category, already using it, you have run a real search and found nothing close, and you can afford to lose the filing fee if it fails. That fee does not come back.

Self-filers tend to go wrong when the mark describes what you sell, when there is a similar mark already on the register, when you pick the wrong category or write a goods-and-services description that is too broad or too narrow, when your specimen does not satisfy the examiner, and when the scam solicitations that target self-filers start showing up in your mailbox looking like official bills.

Another factor is whether you believe your time, as a founder, is best served learning trademarks law, or doing what you do best. While it’s very common for early-stage to have to wear many hats, there are certain fields where I generally do not think founders are best served by attempting to become subject-matter experts in fields unrelated to their role in the business. Get back to code-writing or whatever it is that you do!

There is one last issue to consider. Your mistakes are permanent and public. Every application you file lives in the USPTO's public record, including the ones that get refused or abandoned. A future examiner can see that your mark was turned down before, and so can anyone who later opposes you. A past refusal does not automatically bind the next examiner, because each application is judged on its own merits. But the refusal is right there in the file. Worse, the arguments you made, the disclaimers you agreed to, and the narrower description you accepted while trying to rescue a bad filing can all be quoted back at you the next time around. A clumsy first attempt can make the second one harder, not just slower.

The honest rule of thumb: if the name is core to the business, if you will ever need to enforce it, or if it will show up when an investor or a buyer runs diligence, do it right the first time. A trademark is an asset. Treat the filing like one.

The bottom line

Using your mark protects you a little. Registering it protects you a lot, and in ways that matter exactly when the stakes are highest. For most businesses with plans to grow, the question is not whether to register, but when, and who should handle it.

This post is general information, not legal advice, and it does not create an attorney-client relationship. Every business is different. If you are choosing or protecting a brand name, talk to a lawyer about your facts, or set up a consultation with us: https://long.law/intake