Can you sue for trademark or copyright infringement if you haven’t registered your own trademark or copyright?
Short answer: No.
In order to seek damages or an injunction requiring cessation of use or sale of an infringing product or service or work, you must have registered your own trademark or copyright first.
This is a preliminary consideration for any infringement suit. It is the reason that, if you are using a trademark in commerce or own a common law copyright (i.e., you created the work but haven’t registered your copyright ownership), you should not delay doing so.
A trademark, in particular, is, essentially, a brand. A brand that is not unique, not exclusively yours, and the protection of which is unenforceable is not a brand with a great deal of value.
Likewise, an unregistered copyright simply represents a legal claim of an exclusive right to profit from a work—but it is not a claim that can be heard in a court of law.
Why must you register your trademark or copyright in order to sue for infringement?
This article will discuss the underlying law and offer an option for moving your registration forward properly.
Trademark Registration Required Before Suing For Infringement
In order to sue for trademark infringement, a party in Federal court must demonstrate the following:
- That the party has a valid mark entitled to protection under the Lanham Act (the US Trademark Act), and that …
- The alleged infringer used that mark …
- In commerce …
- In connection with the sale or advertising of goods or services.
This article is primarily concerned with the first of those requirements: that you have a valid mark entitled to protection under the US Trademark Act.
This means that you need to have registered your trademark first with the US Patent and Trademark Office (USPTO) and hold a valid, non-abandoned certificate of registration.
Trademark registration is your door to the brand enforcement process by way of trademark infringement litigation.
You need, in other words, to demonstrate to the court in which you file your trademark infringement action that you are eligible to do so in the first place.
You must show that you have a protected interest in the exclusive use of the trademark in question, whether it be a business name, product name, slogan, or log.
Once you prove to the court that you have a right to be there, then you move on to the other elements of trademark infringement listed above. Namely, the exploration of the question of what the other party did and whether it did or did not constitute infringement. (Note that there are fair use and other defenses available to defendants in trademark infringement cases. Not every mere mention of your trademark will constitute infringement under US law.)
Beyond simply owning a registered trademark that may have been infringed, you must also demonstrate to the court that there is an actual likelihood of confusion.
You may remember this concern during your own trademark registration process?
It is the idea that consumers buying your product or service in interstate commerce will be confused as to the source of a service or product for sale because of the infringer’s use of your trademark (or similar enough a trademark to “likely” confuse some consumer, somewhere in the US).
During your trademark application process, you had to prove that your proposed trademark did not confuse consumers relative to other already-registered trademarks on the USPTO’s Principal and Supplemental Registers.
In a trademark infringement action, the shoe is now on the other foot. You must prove the likelihood of confusion posed by the other party’s use in relation to your own registered trademark.
Copyright Registration Also Required Before Suing For Infringement
Likewise, you cannot sue for copyright infringement in US Federal Court without first registering your copyright ownership with the US Copyright Office.
The US Copyright Act explicitly states that “… no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” (17 USC §411)
Further, in 2019, the US Supreme Court clarified that the copyright registration must be complete before suing for infringement. You cannot simply apply for a copyright and then file a copyright infringement lawsuit.
Once the Copyright Office has issued its certificate of registration, a copyright owner may then sue for infringement that has occurred prior to registration as well as infringement that occurs after registration, the Court held.
The Court likened this requirement to an “administrative exhaustion” requirement that must be satisfied before commencing an action. (Many causes of action—such as the discharge of student loan debt in bankruptcy, for example—require that a plaintiff have “exhausted” or tried unsuccessfully every administrative option for dealing with an issue prior to filing a lawsuit.)
The Court did allow for a couple of limited circumstances in which copyright owners may sue for infringement before registering a copyright. The Court provided these examples of those limited circumstances:
- A copyright owner preparing to distribute a work of a type vulnerable to pre-distribution infringement (e.g., a movie or musical composition) may apply to the Copyright Office for pre-registration.
- A copyright owner might also sue for infringement of a live broadcast before fully registering a copyright ownership.
In short, the Court stated that the Copyright Act protects copyright owners by vesting them with the right of exclusive use in that protected work.
The protection against infringement provided by the statute kicks in only when the copyright is fully registered.
Suing for Trademark or Copyright Infringement: The Bottom Line
The bottom line with regard to trademark or copyright infringement suits is that you need to have the key to the door before you can enter the courtroom.
Registration of your trademark or copyright with the USPTO or the US Copyright Office is the key to the infringement litigation castle.
The trademark registration process, currently, takes more than a year from application to issuance of a registration certificate even under the best (most non-adversarial) conditions. The copyright registration process occupies a similar timeline.
That being the case, if you want to protect your intellectual property rights, you need to move quickly to file your trademark and copyright registration applications as soon as you are able. Time is not your friend.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting enterprises in every industry with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.