The term "trademarking" is one often used by businesses and almost never used by trademark lawyers. The reason? Because the phrase "trademarking" does not accurately reflect how US trademark law and protection works.
Under US trademark law, trademark rights are based on use of the trademark or brand name in commerce. Therefore, strictly speaking, registration of the trademark is not required. However, owning a federal trademark registration is highly recommended in most instances, as it provides several legal and commercial advantages, such as:
- The ability to bring an action for trademark infringement in U.S. federal court
- Reliance on the U.S. trademark registration to obtain registrations in foreign countries
- The ability to file the U.S. trademark registration with U.S. Customs to prevent importation of infringing or counterfeit goods
If you have an unregistered trademark, you may use the "TM" (trademark) or "SM" (service mark) designation. The federal registration symbol "®" can only be used after the trademark achieves registration status in the United States Patent and Trademark Office.
Contrary to popular belief, obtaining a federal trademark registration is often nuanced and difficult, and is not the same as registering a trade name with the Secretary of State's Office of a company's home location. Therefore, it is highly advisable to consult a top trademark lawyer prior to using a trademark in commerce in association with goods or services. By speaking with a trademark lawyer early in the product naming selection process, it may be possible to avoid large and unnecessary litigation costs that may arise from ignorance of U.S. trademark law.