As a Small Business Owner You’re Thinking: Why Bother with Filing a Trademark?

Here’s why small business owners need to take the necessary steps to file trademarks. 



I know what you’re thinking:  You’re thinking: “Why bother with filing a trademark?”  And, your next thought: “Even if I need to file, why use a lawyer?”  And then: “Who needs a trademark lawyer?  The website makes it look easy!”

Let me tell you why.

First, U.S. trademark rights are based on the first to use, and the continuous use of a trademark (for goods) or a service mark (for services) in interstate commerce.

Unlike the trademark laws of many other countries, in the U.S., your rights are based on a “race” to actually use the trademark, rather than a race to be the first to file an application with the U.S. Trademark Office. There are some exceptions to this “race to use” rule: Applications can be filed based on an intention to use a trademark.

Also, there is, initially, no “use” requirement with respect to applications based on trademarks registered outside the U.S. (I’ll explain this in more detail later).

Now, it should be known that trademark owners do not have to file for registration in order to have the right to sue for the infringement of their mark, but registering a mark has many attractive features, the most important being that it can save a trademark owner a lot of money.   

If someone came along with a trademark that is similar to your trademark for similar goods or services and were “likely to confuse” the relevant consumers to think your goods or services are sold by the newcomer, you would then have a claim for trademark infringement.  

And, with a claim in hand, you could send a letter and tell the malevolent Infringer to stop their bad conduct.  (Lawyers like to say, “cease and desist,” which, basically, means “stop” and “don’t ever do that again.”)

Semantics aside

Semantics aside, if you send a letter demanding that an infringer stop confusing your customers with their “likely to confuse,” similar trademark, and you don’t have a federal trademark registered with the U.S. Patent and Trademark Office (that is, the USPTO), well, whoever receives that letter might respond (if they respond at all), “So what? 

Prove it, my friend.

Show me how long you have been using your mark and where you’ve been using it, and your sales, and receipts, and the amount you spent on advertising it, and we can have our attorneys argue (you pay yours; I’ll pay mine) over whether that constitutes enough ‘use’, and whether your ‘use’ began before mine, and whether your ‘use’ is limited to the geographic areas where you sold your goods, and THEN maybe you can’t stop me from using MY trademark.”

Not a terrific outcome.

Now, take that same cease and desist letter and attach a copy of your trademark registration, which is listed on USPTO’s Principal Register. 

(A mark listed on the Principal Register is afforded a lot more protection than a mark listed on the Supplemental Register). 

Or, the letter can merely recite the Registration Number, and then the Infringer can go online to to find the registration for themselves. 

Next page- Trademarks can prevent lawsuits.

Mark Kaufman
Mark Kaufman
Mark Kaufman, Esq. is a graduate of Amherst College and Columbia Law School. He has practiced law for over 25 years. He is the name partner of Kaufman & Kahn LLP, based in New York City. Mr. Kaufman has a broad-based business law and commercial litigation practice with a special focus on trademark and copyright law. He has been responsible for prosecuting, enforcing, and defending hundreds of trademarks and copyrights over the course of his legal career. He also has expertise in negotiating a range of agreements relating to the use, protection and licensing of intellectual property. He represents a range of clients, including artists, e-commerce companies, retailers, and publishers. Mr. Kaufman resides in Westchester County, New York. Website

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