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Trademarks have been around for centuries. Trademarks are a method of allowing commercial businesses to identify their goods (and services) to consumers. A trademark says to consumers: “Our business made this” or “Our business offers this service.” In general, a successful trademark identifies positive attributes to the consumer like solid craftsmanship, excellent materials, quality and product longevity.
Trademarks come into existence when the word, phrase, mark, logo or design are used. In modern commercial markets, trademarks are almost always registered, but legally, registering a trademark is not strictly required. The difference between a trademark and a registered trademark can cause confusion. To add to the confusion, in the United States, an application to register a trademark can be filed before the trademark is used. These are called “intent-to-use” applications. Here is a brief explanation of some of the common similarities and differences between trademarks and registered trademarks.
Suing for Trademark Infringement
Both types of trademarks are legally protected and owners of both types may bring trademark infringement litigation against an infringer. For either type of trademark, the trademark owner alleging infringement must prove two elements:
Both types of trademarks are protected from infringement under the Lanham Act. Registered are protected under 15 U.S.C. § 1114 and unregistered trademarks are protected under 15 U.S.C. § 1125(a). Legal protections for unregistered trademarks are based on the doctrines of false designation of origin and false advertising. Unregistered trademarks are also protected by many state statutes.
However, there are important differences with respect to the legal protections provided to unregistered and registered trademarks. They include:
Use of Different Symbols
Per the Lanham Act, registered trademarks are entitled to use the “circle R” symbol in conjunction with the trademark. By contrast, unregistered trademarks cannot use the circle R symbol. However, owners of unregistered trademarks can place the symbol “TM” near their trademarks. Use of the “TM” symbol gives notice to any person that the word, phrase, mark, logo or design is intended to be a trademark or service mark; that is, the mark is intended to be a unique identifier for the commercial source of the goods or services being sold. The circle R symbol serves a similar “public notice” function, but, technically, the circle R symbol only signifies that the trademark in question has been registered.
If you have questions about your rights as a trademark owner or if you are facing trademark litigation, contact the proven trademark litigators at Revision Legal at 231-714-0100.
One of the most practically significant differences between unregistered and registered trademarks involves geographic rights. An unregistered trademark—sometimes called a common law trademark—creates rights only in the geographic area where the mark is actually used in commerce. If a small bakery in Ann Arbor, Michigan uses the name SUNRISE BAKES without registering it, its common law rights extend only to the Ann Arbor market where consumers actually associate the name with that bakery.
A registered trademark, by contrast, confers nationwide priority as of the application’s filing date under 15 U.S.C. § 1057(c). This constructive use priority can be crucial. Under Zazu Designs v. L’Oreal, S.A., 979 F.2d 499 (7th Cir. 1992), the court made clear that token or minimal use before registration provides little protection, while federal registration locks in nationwide priority the moment the application is filed.
After five years of continuous use following registration, a trademark owner may file a Section 15 Declaration of Incontestability under 15 U.S.C. § 1065. An incontestable registration cannot be challenged on the grounds that the mark is merely descriptive or lacks secondary meaning—two of the most common attack vectors in trademark disputes.
The Supreme Court addressed the scope of incontestability in Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985), holding that an incontestable registration provides an absolute defense against descriptiveness challenges. This protection is available only to registered trademarks—owners of unregistered marks remain perpetually exposed to descriptiveness attacks regardless of how long they have used the mark.
Registered trademark owners can record their marks with U.S. Customs and Border Protection (CBP) under 19 U.S.C. § 1526. Once recorded, CBP agents are authorized to seize and forfeit counterfeit and infringing goods at the border before they enter U.S. commerce. This tool is particularly powerful in industries where counterfeiting is common, such as apparel, electronics, and luxury goods.
Unregistered trademark owners have no equivalent mechanism. They must rely on post-importation civil litigation, which is far more expensive and time-consuming than border interdiction.
The Lanham Act provides robust damages remedies for registered trademark owners. Under 15 U.S.C. § 1117, a successful plaintiff may recover:
Additionally, the Trademark Counterfeiting Act provides for statutory damages between $1,000 and $200,000 per counterfeit mark per type of goods or services, rising to $2,000,000 for willful counterfeiting. These statutory damages are available only for registered marks, eliminating the need for plaintiffs to prove actual damages in counterfeiting cases.
The ™ symbol may be used by any business to claim trademark rights in a word, phrase, or logo, regardless of whether a registration exists. Using ™ signals to competitors and consumers that the owner is asserting trademark rights and may deter infringement even before registration is obtained.
The ® symbol, however, is reserved exclusively for marks that are actually registered with the USPTO. Using ® on an unregistered mark is a federal violation under 15 U.S.C. § 1111 and can constitute fraud that may disqualify the owner from recovering attorneys’ fees in later litigation. Always confirm registration status before using ®.
Contact the trademark litigators at Revision Legal at 231-714-0100 with questions about protecting your trademark rights.
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