One of the top questions we are often asked is do I really need to register my trademark with the U.S. Patent & Trademark Office? Our answer may come as a surprise to most people: No, no you do not!
The fact is trademark rights in the U.S. have very little to do with the U.S. Patent & Trademark Office (USPTO). Trademark rights are provided by federal statute in the U.S. and, specifically, by The Lanham Act, 15 U.S.C. §§ 1051 et seq. Importantly, the statute not only allows for protection of trademarks registered with the USPTO but it also provides virtually the same protection for trademarks that are not registered. Sure, if you register your trademark with the USPTO you get a presumption of validity if you ever file suit to enforce your rights in federal court. But less than 1% of trademark owners can afford the steep cost of about $300,000 in lawyer fees to do so. Accordingly, for 99% of trademark holders the presumption of validity in federal court really isn’t a benefit at all.
Returning to The Lanham Act, you can enforce your unregistered trademark just like a registered trademark provided that you can establish (1) it was in use prior to the alleged infringing trademark and (2) it is otherwise entitled to trademark protection (i.e., is distinctive and not descriptive). Now here’s where it gets interesting. Over the years one of the greatest shortcomings of the federal registration system has been that it lacks a manner to verify actual use of trademarks registered with the USPTO. Sure, they require a sample of use to secure your registration. But should you ever attempt to enforce it you will still need to provide evidence of actual use of your trademark in commerce by your claimed date of first use. In short, merely owning a federal trademark registration is not enough. You have to be able to prove your actual use of the trademark.
Today, however, a technological advancement can provide independent verification of your use, use that is, or will soon be, accepted by all courts in the United States. That advancement is an NFT Trademark secured on the block chain and it is now available to further secure your trademark rights!
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What is the Block Chain?
Block chain technology has been around for a while. In short, it’s a manner of securing information in a record that can never be altered or deleted. Further, when it is added to a record, because of the way it is done, you have a unique time stamp (i.e., we know when it was added for all time, space, and dimension) that likewise cannot be altered.
What is an NFT?
NFT stands for Non-Fungible Token and is, effectively, a set of data that is stored on a block chain. This can include anything from real estate transactions to cryptocurrency to trademark rights.
How Does the Block Chain and NFT Technology Secure my Trademark Rights?
Remember “unregistered” trademarks are protected just like USPTO trademarks so long as they can show the trademark is (1) in use and (2) is otherwise entitled to trademark protection? A trademark secured on the block chain satisfies that first component whether the trademark is registered or not by providing incontrovertible evidence of use at a definitive time. Moreover, should you ever try to enforce a registered trademark you will need to prove when it was first used in commerce. Registration on the block chain satisfies this requirement.
So Who Should Register an NFT Trademark?
- USPTO Applicants / Registrants Who Want to Increase their Trademark Protection by Making Their Evidence of Use Unassailable.
- Rejected USPTO Applicants / Registrants Who Want to Secure Trademarks Rights as an Unregistered US Trademark under the Lanham Act.
- Budget Conscious Individuals & Start-Ups That Can’t Afford or Do Not Want to Pay the Federal Filing Fees for a USPTO Trademark.