A business or individual acquires trademark rights by actual use of the trademark in commerce, not registering the trademark with the USPTO. However, there are several important trademark benefits to registering a trademark that can only be obtained through registration on the principal register with the USPTO.
Obtaining nationwide trademark priority in a registered trademark gives the trademark owner protection throughout the US instead of limiting the protection to the geographic area in which the trademark is being used in association with the product and/or service. Without federal trademark registration, a trademark owner only acquires legal protection in the jurisdiction where the owner uses the trademark. Because of this, nationwide priority is usually seen as one of the most important advantages to have a trademark registered on the principal register with the US Trademark Office. If there is a prior user that began using a similar unregistered trademark, and a business or individual acquires trademark registration, the business or individual may be able to prevent that user from expanding its business to new jurisdictions or geographic areas. Nationwide priority in a trademark is a valuable asset to obtain for any business, entrepreneur or inventor launching a product or service in interstate commerce.
Once a trademark is federally registered for five years, the owner may apply for incontestability status for the trademark. If this status is granted, it can eliminate many different challenges another individual may have for the trademark. A incontestable trademark cannot be challenged for (1) being confusingly similar to another trademark, (2) being functional, or (3) lacking secondary meaning.
Automatic Right for Trademark Infringement in Federal Court
Obtaining a trademark registration on the principal register makes it much easier to enforce a trademark owner’s rights in federal court. The district courts of the United States have proper jurisdiction to hear cases involving all federally registered trademarks. If a trademark owner does not hold a federally registered trademark, it is more difficult to get its case in front of the federal courts if trademark infringement is identified.
Ability to Recover Money
Having a federally registered trademark may provide the trademark owner the ability to recover the maximum amount of damages available. Federal trademark registration makes it possible to recover damages up to three times the amount of actual damages in a trademark infringement case. Additionally, the business or individual may recover fees paid to their attorney to enforce the trademark infringement action.
Use of the ® Symbol
Use of the ® (circled R) is only allowed for a trademark that is registered with the USPTO. Using the circle R gives constructive notice that the trademark is claimed as an exclusive right. This means that a defendant in a trademark infringement case cannot claim that its infringement was innocent.
Deters Others from Using your Trademark
Deterrence comes in two ways: (1) the USPTO must refuse to grant federal registration to a confusingly similar trademark, and (2) the trademark will appear on trademark searches when anyone else attempts to use a similar trademark. Many people want to avoid a lawsuit, so having a trademark registered on the principal register will put the world on notice of the trademark and its owner. Further, the business or individual will have the exclusive right to use the trademark in association with its products and/or services.
Advantages in Court
A federal registration shows that the trademark is valid, identifies the trademark owner and the goods and/or services the trademark covers, and that the trademark has been continuously used in interstate commerce. Any time that a business or individual proceeds to enforce its trademark rights in litigation, the business or individual will have the ability to prove its rights via its federal registration certificate issued by the USPTO. The ability to provide trademark rights through a USPTO issued certificate avoids the significant costs of producing documents to prove the trademark was used in interstate commerce and also that it is not generic, descriptive, or confusingly similar to another trademark.
Registration in Foreign Countries using U.S. Priority Date
If a business or individual has acquired a trademark registration on the principal register and would like to expand internationally, the member nations of the Madrid Protocol make it much easier to obtain trademark rights in a member nation. An application for foreign trademark protection using the Madrid Protocol allows the trademark owner to file a single application and simply designate which countries in which they would like to apply for protection.