A trademark is a valuable asset for any business, helping distinguish its products or services from competitors, but not all trademarks offer the same level of protection. Businesses can choose between using a registered and unregistered trademark, each carrying different legal rights and enforcement options. While unregistered trademarks provide limited protection under common law trademark principles, registering your trademark with the United States Patent and Trademark Office (USPTO) grants broader protections and stronger legal advantages. In this article, we examine the main advantages and disadvantages of each, to help businesses decide how best to protect their intellectual property.
Understanding Registered Trademarks
A registered trademark is a legally recognized mark that has been officially recorded with the United States Patent and Trademark Office (USPTO), granting the owner exclusive nationwide rights. To obtain registration, an applicant must file a trademark application, undergo a USPTO examination, and pass a public opposition period. Once approved, the trademark registration creates a presumption of validity and ownership, making enforcement in legal disputes significantly easier.
One key advantage of registering your trademark is the broad protection it offers. Owners of registered marks can take legal action against infringers, seek damages, and block import of counterfeit goods. The ® symbol also serves as a public notice of ownership, deterring unauthorized use.
What Is an Unregistered Trademark?
An unregistered trademark, or common law trademark, is a mark that has not been registered but still carries trademark protection based on usage. Businesses acquire rights simply by using a mark in commerce, but protection is limited to the geographic area where it is actively used. Without trademark registration, enforcing an unregistered mark can be difficult, as the owner must prove they were the first to use it and that consumers indeed associate the mark with their business.
Unlike registered marks, unregistered trademarks lack presumption of validity and ownership, making infringement disputes harder to win. If another business registers a similar mark, the unregistered trademark owner may be forced to stop using it outside their established market. While businesses can use the ™ or SM symbols to claim ownership, these offer no legal standing.
Key Differences Between Registered and Unregistered Trademarks
While unregistered trademarks are protected under common law, the legal protections of a registered trademark make it a much stronger option for businesses aiming to secure long-term brand rights. Here are a few of the other primary differences:
| Feature | Registered Trademark | Unregistered Trademark |
| Legal protection | Nationwide protection | Limited to geographic area of use |
| Presumption of ownership | Yes (legal presumption of validity) | No (owner must prove ownership in court) |
| USPTO database listing | Yes | No |
| Right to use ® symbol | Yes | No (can use ™ or SM) |
| Enforcement in federal court | Stronger legal standing | More difficult to prove ownership |
| Remedies for infringement | Injunctions, monetary damages, attorney fees | Injunctions, monetary damages, attorney fees |
| Protection against counterfeits | Yes can record with U.S. Customs to block imports | Only registered trademarks can be recorded with Customs |
Benefits of Registering a Trademark
Registering a trademark provides businesses with significant legal and commercial advantages. One of the most important benefits is nationwide exclusive rights, allowing the owner to use the mark across the United States, regardless of where it was first used. Trademark registration also provides a presumption of validity and ownership, making it easier to enforce rights in court and reducing the burden of proof in legal disputes.
Registered marks can also be recorded with U.S. Customs and Border Protection to prevent counterfeit goods from entering the country. A registered trademark also enhances a company’s credibility, increasing its value in licensing, franchising, and investment opportunities.
Risks of Using an Unregistered Trademark
While unregistered trademarks do have protections, relying solely on them does create some risks. Protection is limited to the specific geographic region where the mark is used, meaning a business may be unable to expand under the same name if another company registers a similar mark. Without a presumption of ownership, enforcing unregistered marks is more difficult, as owners must prove they were the first to use the mark and that it has built recognition in their market.
Legal disputes involving unregistered trademarks can be costly and carry uncertain outcomes, as courts may require extensive evidence to establish rights. And if another company registers a similar mark with the USPTO, the unregistered trademark owner could be forced to rebrand, losing valuable brand recognition and goodwill.
Businesses using unregistered marks may also struggle to attract investors, as unregistered trademarks lack the formal protections that make them valuable business assets. Given these considerations, businesses should carefully evaluate whether registering their trademark is the best way to safeguard their brand.
How to Register a Trademark
Registering a trademark with the USPTO involves several steps:
- Trademark search: Conduct a search in the USPTO database to ensure no conflicting marks exist.
- File a trademark application: Submit an application with the USPTO, detailing the mark’s goods and services classification.
- USPTO examination: A trademark attorney reviews the application and may issue an Office Action if issues arise.
- Publication period: The mark is published in the Official Gazette, allowing third parties to challenge the registration.
- Trademark registration approval: If no opposition is filed, the USPTO grants the registration, and the owner receives a registration certificate.
Which Type of Trademark Protection Is Right for You?
Deciding between registered and unregistered trademarks depends on your business goals. Small businesses operating locally may find common law protections sufficient, but companies planning to expand nationally should seriously consider trademark registration for long-term security. If your brand is a core asset of your business, registering your trademark is the best way to provide legal protections, enforceability, and brand longevity.
Schedule a Consultation With an Experienced Trademark Attorney
Securing a registered trademark is one of the most effective ways to protect your brand and prevent costly legal disputes. A trademark attorney can help you through the trademark application process, enforce your rights, and develop a long-term strategy for trademark protection.
Contact us to schedule a consultation with an experienced trademark attorney today, and give your business the legal protections it needs to grow and thrive.
About The Author
Matthew McKinney practices in all areas of intellectual property, representing a wide range of clients in connection with the acquisition, transfer, enforcement and defense of their intellectual property rights.
