(Thanks to Neal Seth of Baker Hostetler and Michael Steger of Law Offices of Michael Steger for input on this question.)
“Can I register a trademark for my brand?” That’s typically the first question asked of a trademark lawyer. The second question – not always asked – might be “Why would I want to?” Or rather, is it really advisable?
There is little downside to filing a trademark registration, unless you consider cost and time of little worth. That aside, there may be little or no business benefit from doing so.
Take for example, a professional services business using the names of the partners, say a law firm or accounting firm. That’s not to say that Richard Sears and Alvah Roebuck had no value in their names and wouldn’t have benefited from trademark protection, but only later when “Sears Roebuck” long-survived and became distinct from the original proprietors. Until then, there was nothing to stop Ralph Sears and Bob Roebuck from partnering in accounting under the same name, and trademark protection for the mail-order business wouldn’t have stopped the CPAs from doing so.
A trademark may have little value to the business. A retail business operating in one or few local locations only has nothing to gain from trademark protection, since out-of-town challengers to its name pose no threat to its business.
Similarly, generic or descriptive company names cannot even be registered under trademark in the first place, or at best only under the trademark office’s supplemental register (rather than the Principal Register), with its very limited protection. An example might be “New York Trucking Company”. (For a nice comparison of the Supplemental and Principal Registers, see here.
Another example is a case where you might be able to register the mark, but you have no real intent or interest in enforcing. As Neal Seth pointed out, “You don’t need to register if you are not going to enforce it. In other words, you might not care if somebody else uses the mark.” It begs the question of what value you would get in the registration – and why spend the time and money to register – if you’re not going to enforce.
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