In our experience, it is rare that a company should not at least attempt to federally register its core brands as trademarks. Such situations do arise, however. Trademark registration is not a requirement for a company to use a brand, and many companies proceed with selling a branded product before registering their trademark. Merely using a mark in connection with goods or services gives rise to limited common law trademark rights, so all is not lost where trademark registration is not an option.
Here are the main situations where foregoing a federal trademark registration may be the best course of action:
- You are broke. If you have to choose between buying supplies and filing a federal trademark application, you should almost always choose to buy supplies. Trademarks are tied to the goods you produce, or services you provide, so your first priority should always be producing the best quality goods (or providing the best quality services) you can. That said, we notice that pursuing federal trademark registration often not as expensive as clients expect.
- Your mark is already registered by somebody else. Applying to register a trademark that is already owned by a competing alcohol beverage manufacturer (or sometimes even a bar/restaurant or soda company) may be a waste of money — or worse — a way to prompt a fight with another brand owner. Using a mark for an extended period of time, without any interference or opposition by a brand owner, makes it less likely and more difficult for the brand owner to challenge your rights down the road. Continued use of a brand name without a complaint from, or any confusion with, another company could cause the other brand owner to forfeit their ability to challenge your use. Sometimes it is best not to poke the beast, and filing a trademark application may awake a sleeping giant.
- Your mark is generic/highly descriptive. The USPTO will refuse to register as a trademark a term or phrase that is either generic or so highly descriptive that consumers will not recognize the phrase as relating to a specific brand name. This gets complicated, but it may create a situation where trademark registration is impossible, and an application would be a waste of money.
There may be other situations where foregoing a trademark registration is the best course of action, but these are the most common situations we encounter. Your trademark attorney should be able to provide you with feedback regarding whether your brand appears to be available for registration on the front-end, in light of the various factors involved in the trademark application process. Don’t be afraid to leverage your attorney’s knowledge in this area early on so you don’t waste money chasing marks that are not available for registration. For more information on this topic, contact Dan Christopherson.