A business or individual acquires trademark rights by actual use of the trademark in commerce*, not registering the trademark with the United States Patent & Trademark Office (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. A trademark allows customers to identify a business as the source of a product or service. Trademarks are the basis to create a company’s brand and reputation: they create a relationship of trust with customers, which enables a business to establish a loyal clientele and enhance the company’s goodwill.
*Use in commerce means using your trademark in selling or transporting your goods out of state or in providing services to customers who live outside your state. For a trademark to be registered at the federal or national level, it must be used in “interstate commerce.” For goods, “Interstate commerce” involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. Federal trademark law defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”
The advantages of owning a trademark registration on the Principal Register of the USPTO include the following:
Constructive notice to the public of the registrant’s claim of ownership of the tradmark;
A legal presumption of the registrant’s ownership of the trademark and the registrant’s exclusive right to use the trademark in commerce on or in connection with the goods and/or services listed in the registration;
A date of constructive use of the trademark as of the filing date of the trademark application;
The ability to bring an action concerning the trademark in federal court;
The ability to file the United States registration with the United States Customs Service to prevent importation of infringing foreign goods;
The registrant’s exclusive right to use a trademark in commerce on or in connection with the goods and/or services covered by the registration can become “incontestable,” subject to certain statutory defenses;
The use of the United States registration as a basis to obtain trademark registrations in certain foreign countries
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 USPTO. 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 incontestable status is granted, it can eliminate many different challenges another individual may have for the trademark. For example, a trademark that acquires incontestability status cannot be challenged on the basis of being merely descriptive, misdiscriptive, or geographically descriptive or misdiscriptive of the goods and/or services. The benefits of acquiring incontestable status are that it provides conclusive evidence of the validity of the registered trademark, the registrant’s ownership in the trademark, and the registrant’s exclusive right to use the trademark in commerce. All that said, even though a trademark may acquire incontestable status, it is not entirely immune to future challenges of fraud, abandonment, non-use, false suggestion of a connection, functionality, and genericness.
Enforce Trademark Rights In Federal Court
Obtaining a trademark registration on the principal register makes it much easier to enforce a trademark owner’s rights before the Trademark Trial & Appeal Board (TTAB) or 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 ® Federal Trademark Registration Symbol
Use of the ® (circled R) is only allowed for a trademark that is registered with the USPTO. Using the circled 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 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 United States 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 system 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 with their own national or regional trade mark office and simply designate which countries in which they would like to apply for protection. The Madrid Union currently has 112 members, covering 128 countries. These members represent more than 80% of world trade, with potential for expansion as membership grows.
Are you launching a new company or developing a new brand or product and need to clear and/or register a trademark? Are you an online seller enrolling in a brand registry program? Are you looking for help with another federal trademark matter? We can assist! Please do not hesitate to give us a call or fill out our contact form. There is absolutely no charge to schedule an initial consultation with one of our trademark attorneys.
NexTrend Legal, LLC, a trademark law firm with offices in Charleston, South Carolina and Jacksonville, Florida. Our trademark attorneys provide federal trademark services to businesses of all sizes, new start-ups, franchisors, inventors, product developers, online sellers and entrepreneurs throughout the US and internationally. Our federal trademark services include, but are not limited to, trademark search, trademark registration, trademark monitoring, trademark office actions, trademark oppositions, trademark renewals and more.
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