Analyzing the Looming Trademark Disputes Over Facebook’s “Paper” (Part 2 of 3)
This post continues our series on the looming trademark disputes over Facebook’s “Paper” app. As previously reported, on the same day that Facebook launched its Paper app, FiftyThree, Inc. filed an application for federal trademark registration for its use of the term “Paper” in connection with computer application software enabling writing on tablets (paraphrased). On the very next day, Paper Communications, Inc. owner of the publisher of Paper Magazine, filed its own application for federal registration on the use of “Paper” with online and traditional magazines.
In this post we will discuss the benefits of registering one’s trademark with the United States Patent & Trademark Office.
Is Registration Required? One does not need to register a mark in order to possess trademark rights in that mark. Merely using a mark in commerce as an indicator of product source establishes common law trademark rights in the geography in which the mark is used. One can provide a trademark notice for an unregistered mark with a TM (for trademarks) or an SM (for service marks).
Why Register One’s Mark? If one can establish trademark rights merely by using a mark in commerce, then the next question might be why would companies like FiftyThree and Paper Communications rush to register their “Paper” marks no. FiftyThree has been using “Paper” since 2012 and Paper Communications has been using that mark since 1996. So, to the extent those are distinctive identifiers of the source of the underlying goods, FiftyThree and Paper Communications should have already have common law trademark rights.
The answer is that registering a mark provides important advantage. These advantages include:
•a presumption that you own the mark;
•a presumption that you have the exclusive right to use the mark nationwide;
•notice to public of your claim of ownership of the mark;
•the right to sue an infringer in federal court;
•the use of the U.S. registration to obtain foreign registrations;
•the right to use the federal registration symbol ®
•listing in the U.S. Patent & Trademark Office’s online databases.
Here, FiftyThree and Paper Communications were likely already using their “Paper” marks on a nationwide scale. So, establishing nationwide rights was probably not the driving force behind their registration attempt. Most likely, these registrants the desire to sue an infringer (such as Facebook perhaps) in federal court.
Is There Any Reason Not to Register a Mark? Given these benefits of registering one’s mark, it is worth asking if there is any reason not to register a mark. There might be a few. First is cost. Whereas common law rights in a mark are obtained automatically (and with no legal costs) upon use of a mark in commerce. Registration is not free. It will cost at least $325 to apply for registration in addition to any attorneys fees (typically in the $1,000-$3,000 range).
Another reason why some entrepreneurs elect not to register their mark is when there are prior marks that are potentially confusingly similar. An entrepreneur may decide that attempting to register a mark may prompt an owner of a prior similar mark to not only oppose the registration by to challenge the entrepreneur’s right to use the mark at all. If this is a concern, it might be better for the entrepreneur to select a new brand with a clearer path to use and registration.