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This practice is limited to matters and proceedings before Federal Courts, the District of Columbia and Maryland.

Benefits of Federal Trademark Registration

November 14, 2017

 

Under U.S. trademark law, state or federal registration are not prerequisites to acquire legal rights in a trademark. However, federal registration provides the trademark owner with substantial benefits and more expansive rights than state and federal laws provided for unregistered marks.

  1. Permission to Use the ® Symbol. Only the owner of a federally registered trademark may use the ® symbol with their trademark. This symbol puts the public on notice that the mark is registered with the U.S. Patent and Trademark Office (“USPTO”) and that no other party can register or use a similar mark in association with similar products or services. The ® designation bestows legitimacy upon the company’s brand. The use of the ® symbol conveys that the business owner is serious about their brand, they aim protect it, and that brand integrity is essential to their operations.

  2. Creates Presumption of Ownership. A federal trademark registration creates a presumption that the trademark is valid and exclusively owned by the listed owner(s) of record which can provide a significant advantage in court against a trademark infringer. If the trademark is registered with the USPTO, in a suit for infringement, the burden shifts to the alleged infringer to disprove the validity of the trademark or that the trademark is exclusively owned by the trademark owner(s) of record.

  3. Discourages Use of Mark by Other Businesses. Once your federal application for registration is filed, you mark becomes part of the USPTO TESS database’s public records. Now that your mark is included in the database, when a trademark owner adopts a new mark and performs a search for confusingly similar marks, your mark will provide notice that the mark is already in use. In an effort to avoid infringement, a newcomer is less likely to select a mark that is already in use.   

  4. Prevents Registration of Similar Marks at the USPTO.  In addition to discouraging infringing use, your registration will prevent similar marks from obtaining federal registration. The USPTO reviews newly filed applications against pending and registered marks and prevents registrations of confusingly similar marks for related goods or services. Thus, for no additional fee, the USPTO will prevent another party from registering an infringing mark.

  5. Nationwide Rights Acquired as of Application Date. Federal trademark rights are acquired as of date the application is filed with the USPTO, not upon approval of registration.  Therefore, the sooner you file your application, the sooner your federal rights are established.

  6. Protection Against Counterfeit Imports. Federally registered trademarks can be registered with U.S. Customs and Border Protection (“Customs”). Once registered with Customs, they are authorized to block infringing imports. At no additional cost to you, Customs will work on your behalf to prevent trademark infringement of your brand. Do not be fooled into believing that because you are not a multi-billion dollar business that you are not at risk of having your products infringed. There are numerous instances of counterfeit goods of small businesses imported from China.

  7. Provides Basis for Monetary Award. The Trademark Act does not permit punitive damages. However, in cases involving willful trademark infringement, subject to the principles of equity, a judge can award up to three times the actual damages and profit loss, infringer’s profits, litigation costs, and attorneys’ fees to a successful plaintiff.  Additionally, a plaintiff in a trademark lawsuit may recover up to $2 million in statutory damages instead of actual damages or profits.

  8. Protects Rights in User Names on Social Media. When it comes to securing user names, many social media platforms take a first come, first served approach. But, if the mark is registered, the trademark owner can take advantage of the social media platform’s online reporting tools to prevent the infringer from any continued use. While trying to enforce rights for past clients, Facebook has required submission of proof of trademark registration in order to confer any ownership rights in the mark.

  9. Protects Trademarks in Search Engines Ads. As with many social media platforms, search engines, such as Google and Bing, will require that your mark is registered before the search engine will remove the infringing advertisement. An owner of an unregistered mark will be unable to prevent any unauthorized uses and exploitation of their marks in keyword advertising. Therefore, a user will be permitted to redirect traffic meant for your business to their business website.

  10. Collateral for Financing. A federal registration can be used as collateral to secure financing for the company’s growth or cover cash shortfalls for operating expenses.

  11. Incontestability. After five years on the principal register, a trademark registration becomes incontestable thereby creating conclusive evidence of the registrant’s exclusive right to use the mark. Incontestability limits the grounds on which third-party can challenge the validity of the registration.

  12. Creates Advantages in Domain Name Disputes. A trademark registration is not required before filing a complaint under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), but federal registration makes it easier to succeed. If a third-party infringes your trademark by registering it as a domain name, ownership of a federal registration is one of the elements considered in legal proceedings to determine the rightful owner of the domain name. In addition, federal registration permits the domain name to be reserved until the ownership dispute is determined, thus preventing the erosion of the goodwill and value in your trademarks. To the contrary, a trademark registration is required to take advantage of the Uniform Rapid Suspension System (“URS”) which is a speedier, more streamlined and even more cost-effective domain name dispute resolution mechanism than the UDRP.

  13. Domain Name Protection and Monitoring. After a mark has been federally registered, the trademark owner can take advantage of various domain notification services including service options such as:

    • Sunrise Services - permits the trademark owner priority selection for newly-launched top level domains matching or associated with their trademark before registration becomes available to the general public;

    • Claims Services - systems will alert any person requesting a domain name that matches a registered trademark advising them that the registration of the requested domain name may be infringing on the rights of a trademark owner, and he or she will need to acknowledge those rights before completing the domain name registration. If the domain name applicant continues and registers the domain name, the trademark owner will be alerted of the domain registration;

    • Ongoing Notifications - after registration, a domain notification system will continue to notify the trademark owner if any domains registered are infringing their rights; and

    • Block Infringing Domain Names - the trademark owner can avail themselves to services which permit the blocking of domain name applications of third-parties matching those trademarks for either five or ten years.

  14. Basis for International Registration. A federal registration can be used as a basis for obtaining a trademark registration in other countries without the need to prove actual use of the mark in that country at the time of registration, thereby facilitating protection of your marks worldwide as your business expands.

If you are interested in taking advantage of the benefits that a federal trademark registration provides, contact Cooper Legal so that we may assist you in getting your trademark registered.

 

This blawg is provided by the firm for informational purposes only and may not be relied on as legal advice. If you have any questions related to your specific business needs, schedule your legal consultation today.

 

 

 

 

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