Why Bother Registering A Trademark?

This is a question we get asked all the time: Why bothering registering a trademark? Is it really worth it? In other words, what are the advantages of going to the trouble of registering a trademark as opposed to simply continuing to use an unregistered trademark?

In general, there are three main benefits to registering a trademark:
* (1) stronger protection for your trademark;
* (2) it tends to deter others from copying your trademark; and
* (3) better/stronger remedies in court if you have to sue someone for infringing your trademark.

More specifically, some of the advantages are:

1. The owner of a U.S. trademark registration certificate is entitled to a legal presumption that it is the valid nationwide owner of the trademark;

2. Trademark registration provides the trademark owner with the ability to recover up to triple financial damages and attorney's fees from a trademark infringer in a lawsuit;

3. Potential buyers of businesses usually see increased value when the seller’s trademarks have been registered;

4. Judges tend to give more weight to a registered trademark than an unregistered trademark in trademark infringement lawsuits;

5. A trademark registration increases the likelihood of successfully obtaining an infringing Internet domain name from a cybersquatter;

6. A trademark registration provides presumptive notice to others that your trademark is already being used; thus a company that later adopts a confusingly similar trademark will have trouble claiming ignorance of the trademark;

7. A U.S. trademark registration can be used as a basis for obtaining a trademark registration in foreign countries;

8. A trademark registration (like a copyright registration and an issued patent) can be recorded with the U.S. Customs & Border Protection service and used as a basis for seizing counterfeit products before they enter the U.S;

9. The owner of a U.S. trademark registration has the right to use the ® symbol after the trademark; that alerts third parties to the trademark registration and helps to eliminate the defense of "innocent infringement";

10. The trademark will appear in trademark search/clearance reports conducted by third parties; that tends to discourage those third parties from proceeding with using your trademark or filing a trademark application; and

11. The U.S. Patent and Trademark Office ("PTO") will refuse to grant a trademark registration for any trademark it believe is "confusingly similar" to your trademark.

Those are eleven pretty good reasons for going to the trouble and expense of registering a trademark.

Domain Names Alert - .CO Domain Names Land Grab Starts Sunday?

According to the L.A. Times today - the domain name registrar Go Daddy (a/k/a godaddy.com) is going to launch a big push this Sunday during the SuperBowl to promote the .co domain name extension. We can’t tell yet whether Go Daddy has accurately figured out that there is a real demand for a new domain name extension or whether they’re making the kind of mistake Coca-Cola made a while back when they tried to introduce “New Coke”. But we do know that good .com domain names are getting harder and harder to register and – again according to the L.A. Times - Go Daddy will probably be paying something like $3 million for each 30 second commercial it runs during the SuperBowl. So….unless they are idiots they must be figuring there’s going to be a good return on that investment.

On the other hand, here’s a blog entry that claims the .co extension is just a waste of money.

So…is this a real opportunity or just a hype? We don’t know yet, but for the $30 being charged for a .co domain name ($28 if you buy six or more at the same time), it might be worth a small investment NOW (i.e., before Sunday) to:

(a) protect your company name and brands with a .co domain name if for no other reason than to block out your competitors and cybersquatters; and

(b) to think creatively about other .co domain names you might want to control as we move forward the next few years.

If you are interested in this but for some reason are not a Go Daddy fan, our local outside IT firm EBrothers Solutions, Inc. is an authorized Go Daddy re-seller that offers domain name registrations for the same price as Go Daddy - but with a local personal presence. You can visit them at www.ebsihosting.com.

We don’t exactly know where this is going to go, but we thought you would want to know sooner rather than later.

Please call (760/637-2400) or write (dbranfman@branfman.com) if you have any questions or thoughts about this.