Trademark and Copyright Registration

Trademark Registration

Trademark registration with the U.S. Patent and Trademark Office (“USPTO”) is not a prerequisite to obtaining trademark rights in the U.S. Trademark rights are established through use of the mark in commerce with goods or services, so called “common law” rights. So why register a trademark with the USPTO?

You Create Prima Facie Evidence of Exclusive Nationwide Rights

With a federal certificate of registration in hand, you have prima facie evidence that everything in that certificate is valid. Simply put, this presumption establishes ownership of your trademark as an initial matter. The burden of proof is on anyone who challenges your rights to disprove those facts that the certificate establishes.

You Cut-Off Certain Grounds for Challenging Your Mark

Even a mark that is the subject of a valid USPTO registration is subject to challenge on a number grounds, including that an earlier user has established common law rights that precede the registration owner’s rights in the same or a confusingly similar mark. Once a mark is registered for a period of five years and certain representations made to the USPTO, the ability of a challenger to attack the mark of the registration is significantly reduced. As just one example, a mark that is registered for five years and has achieved “incontestable” status cannot be successfully attacked on grounds that it is merely descriptive of the goods or services of the registration.

You Place Others on Notice of Your Trademark Rights

Filing an application to register a trademark with the USPTO creates a public record of your claim to trademark rights – even before a registration issues. Companies considering the adoption of a new mark regularly review – at a minimum – the trademarks included in the USPTO’s TESS database for availability before settling on a mark. The ability of competitors to find your record claim to rights may dissuade them from adopting a mark that may otherwise appear available.

Copyright Registration

Registration with the U.S. Copyright Office provides strong remedies to creators of original works of authorship (literary works, music, sound recordings, stage plays, lyrics, visual arts, photographs, motion pictures). And some copyright registrations can be handled on a pro se basis. The U.S. Copyright Office system is considered a “deposit” system and not an “examination” system and therefore many copyright applications are granted – but not all.

The Copyright Office’s online eCo system for registration is not user friendly and many non-lawyers find the process daunting. Copyright registrations require eight to ten months to issue – even if the paperwork is completed and deposit submitted correctly the first time. There may also be more complicated issues presented by a copyright interest, for example a claim to joint authorship or an exclusion for “work within the work” that did not originate with the copyright claimant that require greater expertise.

If you would like to talk to us about whether copyright or trademark registration makes sense for your business contact the attorneys at Cahill IP at (502) 443-1058.