Should I Formally Register My Copyright and/or Trademark?

As any entrepreneur knows, the business world is often cutthroat. Companies are constantly trying to create the next best product, service, or brand for sale to consumers. In doing so, the focus often becomes making a profit on the product, service, or brand as soon as possible. However, what many businesses and entrepreneurs alike often overlook is making sure that their product, service, or brand is properly protected from those trying to misappropriate it and seize upon profits despite not putting in the time or effort to create the product or service or establish the brand. Such protection is accomplished through obtaining a copyright upon the written or recorded work or a trademark upon the brand. However, in seeking such protection, a flood of questions often arises: What types of items can be copyrighted or brands trademarked? What are the advantages of formally registering my copyright or trademark? What are the steps involved in obtaining copyright or trademark registration?  

With such questions in mind, the Intellectual Property lawyers at Plakas Mannos are here to answer these queries and provide you with information concerning copyright and/or trademark registration to help ensure that nobody takes advantage of your work and infringes upon your rights. 

Identifying What May Apply Under Copyright/Trademark Protection 

First and foremost, it helps to identify the types of materials to which copyright or trademark protection may apply. In general, copyright protects original works of authorship, such as literary, dramatic, musical, and artistic works. Specific examples would include books, movies, paintings, songs, poetry, architecture, and computer software. On the other hand, trademark protects a brand’s identity. Examples would include brand names, logos, and slogans.  

How to Register Your Trademark/Copyright 

Accordingly, the next logical question becomes: How does one go about obtaining copyright or trademark protection? From a technical standpoint, a work is considered copyrighted as soon as it becomes fixed in a tangible form. Similarly, a brand name or logo is considered trademarked whenever the mark is first used in connection with the business and/or good or service it represents. However, whenever an individual or entity attempts to infringe upon and misappropriate the work and/or mark such copyright and/or trademark protection often becomes difficult to accurately demonstrate, particularly with the regard to the date upon which the copyright and/or trademark arose. For this reason, formal registration of the work or mark is paramount in securing appropriate protection for your intellectual property.  

Benefits of Registering a Copyright 

In seeking formal copyright and/or trademark registration, the benefits are numerous and become readily apparent. Advantages of formally registering a copyright include: 

1. The Ability to Bring an Infringement Action – In nearly all circumstances, registration of your copyright is a necessary prerequisite for initiating a copyright infringement action in federal court.  
2. Statutory Damages – In nearly all circumstances, your copyrighted work must be formally registered with the U.S. Copyright Office either prior to any infringement by a third party OR within three months of the work’s publication in order to obtain statutory damages and attorney fees from said third party in a copyright infringement action. Without such registration, damages are limited to actual damages caused by the infringement, which can often be nominal in nature or difficult to prove.  
3. Validity – So long as registration of your work is made within five years of publication, the certificate of registration issued by the U.S. Copyright Office will demonstrate the validity of your copyright, which may constitute crucial prima facie evidence in an infringement action.  
4. Public Notice – Registration of your copyrighted work provides public notice to the world that your work maintains copyright protection and provides legal evidence of your ownership of the work. Such notice helps to avoid any disputes over actual ownership of the copyrighted work and helps to eliminate the defense of innocent infringement, in which the infringing party claims they were unaware that their acts constituted copyright infringement. 

Benefits of Registering a Trademark 

Federal Registration 

Similarly, formal federal registration of a trademark provides many of the same benefits, including the ability to bring an infringement action in federal court, validity of the trademark, and public notice regarding the existence of trademark protection and rightful ownership of the trademark. However, formal federal registration of a trademark also provides additional benefits that include:  

1. A Foundation for Foreign Trademark Protection – a trademark registration certificate obtained from the United States Patent and Trademark Office (“USPTO”) can be utilized as a basis for filing for trademark protection in various foreign countries. 
2. Use of the Federal Trademark Registration Symbol – formal trademark registration provides you with the ability to use the federal trademark registration symbol, ®, rather than a common law trademark designation reflected by adding the superscript “TM”. Use of the federal registration symbol helps to deter others from infringing upon your trademark and/or using a confusingly similar mark.  
3. Registration with the U.S. Customs and Border Protection (“CBP”) – once a trademark registration certificate is issued by the USPTO, you can record such registration with the CBP in order to block the import of goods that infringe your trademark or are counterfeit. 

State Registration 

In the same vein, registration of a trademark can also be obtained at the state level. While state trademark protection does not provide as many advantages as its federal counterpart, the main benefit of state registration is that it is relatively quick and inexpensive compared to federal registration. However, state registration only provides protection to use the trademark within the state and to sue for infringement in state court. With that being said, state registration does help to establish priority in the trademark should you choose to register your mark on the federal level with the USPTO at a later date. As a result, it is most advantageous to you to pursue both state and federal trademark protection.

Overall, the process for registering your copyright and/or trademark is often complex in nature. Both require submission of an application with a detailed explanation demonstrating your ownership of and/or rights in the respective work or mark. Such application undergoes a detailed review by the corresponding office in order to verify that all requirements have been met and that the applicant is in fact the true owner of the work or mark. This review often spans several months. For trademark applications, once the initial examination is completed and responses are provided to any questions, the trademark is published for opposition by members of the public. Should any opposition be made, proceedings will need to be held in which evidence demonstrating ownership and/or use of the mark in commerce is submitted. Assuming that you maintain proper ownership and/or use rights, a registration certificate will issue thereafter.  

Protect Your Intellectual Property Today 

As a result of the complexities and considerations detailed herein, you should consider seeking counsel to advise you of your copyright and/or trademark rights and help process your registration applications, if desired. If you or your business would like more information considering registration of your copyright and/or trademark, give our Intellectual Property Team a call now at 330-455-6112 to see how we can help you today.

About the Authors

Gary Corroto is a partner and attorney who handles cases in a variety of practice areas, including intellectual property litigation, commercial transactions, mergers and acquisitions, commercial litigation, and others. Hunter Miller is an associate attorney focusing on intellectual property litigation, estate planning and probate, commercial litigation, mergers and acquisitions, and other practice areas.