A client asked me this recently, and my honest answer was: “it depends.” I thought business owners who stumble across this post might be interested in my thoughts.
Clearance and registration do different jobs. Clearance tells you whether someone else already has rights in the same or a similar mark, so you don’t build a brand that draws an infringement claim. Registration confers benefits: a legal presumption that you own the mark, nationwide priority, the right to use the ® symbol, and a stronger position if you ever need to stop an infringer.
A registration is a responsibility. A trademark stays strong only if you enforce it. Owning a registration means watching for similar marks and being ready to send a cease and desist letter when someone uses the same or a confusingly similar mark. Not enforcing a trademark will erode its value over time.
Not every mark is worth the investment. Trademarks exist on a spectrum of distinctiveness. APPLE is arbitrary and distinctive for computers. APPLES is generic for apples. The more distinctive the mark, the easier it is to register and enforce. Generic words can’t be protected at all. Descriptive marks (think AMERICAN AIRLINES) can acquire distinctiveness and become valuable assets, but are harder to enforce in the early days, because competitors may adopt similarly descriptive names for similar goods and services.
Take a hypothetical mark like CLEAN START for a fire-starting fluid. CLEAN START is descriptive: it tells customers what the product does rather than who makes it. If a competitor started using something similar, would you spend money fighting over it? Maybe.
But for many small businesses, the smarter move is to put their budget behind a distinctive brand that sets them apart — usually the company name or flagship mark — and to treat secondary or descriptive product names differently. Of course some businesses choose to clear and register even descriptive marks, to deter competitors and build a portfolio of IP assets.
There’s are several approaches:
– Clear a new mark, so you know you aren’t stepping on anyone’s rights, but skip registration if the mark is descriptive or will be used only for a short time.
– Skip clearance and start using the mark, and deal with an objection if one ever comes. This saves legal fees up front, but you assume the risk of having to rebrand after you’ve invested in the name.
– Clear and register every mark you use, because registrations are business assets and can deter competitors.
Plenty of businesses operate successfully without registering any brands or concerning themselves with trademarks at all. Of course many brands value IP and want to own and defend the brands they build. The key is making that choice deliberately, with a clear sense of which brands matter most to your business, and how much risk and uncertainty you can tolerate.
If you’re weighing which of your marks are worth protecting, I’m happy to talk it through.
This post is for general information and is not legal advice.
