You do not need to register your trademark for it to be protected under the law. You can establish rights in a mark based on legitimate use of the mark alone. However, there are a number of advantages to registering your trademark with the U.S. Patent and Trademark Office’s official register of trademarks and with the Illinois Secretary of State’s official register:
1. You have a claim for infringement or dilution under the Lanham Act, 15 U.S.C. 1051. This means the action can be brought in federal court for trademark infringement and the copycat may be subject to an injunction, profit disgorgement, costs of suit, attorney’s fees and, if bad faith is proved, triple damages. See 15 U.S.C. 1116(a), 1117(a).
2. There is a legal presumption of your ownership of the mark and your exclusive right to use it. If another person or business used your trademarked name or logo for financial gain, and you filed an infringement or dilution action, the court will begin with the presumption that you are the rightful owner and that nobody else can use it. This means the burden is on the copycat to prove that he is not infringing or diluting instead of the burden being on you to prove infringement or dilution.
3. It gives constructive notice to the public of your ownership of the mark. For example, filing a U.S. registration application allows you to place a “TM” for trademark or “SM” for servicemark next to your business name or logo. Once registration is final, the business may display an “®” after its name or logo. Further, anybody worldwide that wishes to use your trademarked business name or logo can look up the name on the U.S. Patent and Trademark Office registry and see whether the name or logo is in use and if so in what category of use. This may have the effect of deterring others from infringing on your mark.
4. It gives your trademark international impact. For example, the use of the U.S. registration is a basis to obtain trademark registration in foreign countries. Additionally, you have the ability to file the U.S. trademark registration with the U.S. Customs Service to prevent importation at the border of infringing foreign goods.
5. Filing in Illinois as well as with the U.S. gives you multiple bases for recovery of payment for the infringement or dilution. The Illinois Trademark Registration and Protection Act, 765 ILCS 1036, entitles you to an additional claim if the parties had sufficient contact with Illinois. If the federal court finds it lacks jurisdiction under the Lanham Act because no interstate commerce was involved, then a state court action could afford you similar relief. In addition, having your mark on the Illinois registry puts Illinois residents on constructive notice that the business name or logo is trademarked.