Trademark registration is not required in the United States, however, owning a federal trademark registration enhances rights in a mark. Here are the top ten reasons why you should register your mark with the United States Patent and Trademark Office:
- Prevention: Registering your mark can prevent potential conflicts from arising. Prospective applicants or their counsel often search the USPTO’s free online trademark registry to determine whether a proposed mark is available. Prospective applicants who encounter your mark might be deterred some from filing a mark that conflicts with yours.
- Priority (U.S.): Upon registration, the filing affords you nationwide priority over all others who filed after you, except: (1) parties who used the mark before your filing date; and (2) parties who are entitled to an earlier priority filing date based on a foreign application.
- Priority (Foreign): You have six months from your U.S. filing date within which to file in many foreign jurisdictions and claim as a priority filing date the date of your first-filed application in the U.S. for the same mark for use with the same goods and/or services. For example, if you apply in the U.S. on May 15, you may apply for the same mark for use with the same goods and/or services in China up to November 15 and claim a priority filing date in China of May 15. Your application in China will take priority over all others who filed in China during those six months.
- Presumption: Once on file, it is presumed your rights extend throughout the United States and its Territories. Nationwide presumptive rights, as contrasted with geographic limitations inherent in unregistered marks, can be critically important in avoiding confusion in domestic markets in which you currently operate and into which you intend to expand.
- Protection: Registering your mark protects against the registration of a third party’s confusingly similar mark for related goods and/or services by leveraging resources of the USPTO, which is charged with refusing registration of marks that conflict with prior pending and registered marks.
- Presentation: Registration affords you the right to use the ® symbol when displaying your mark. Use of the ® symbol communicates to your current and prospective clients you are serious about protecting your intellectual property rights. Use of the ® symbol is required at the time an enforcement action arises in order to recover profits and damages in federal court.
- Property: Your Certificate of Registration constitutes prima facie evidence of your exclusive ownership of the mark for use with the goods and/or services identified in the registration. After five years of continuous use your property right becomes “incontestable” by operation of law and can no longer be challenged by any third party claiming your mark is likely to cause or is causing confusion with their mark.
- Plaintiff: Federal trademark registration grants you the right to sue for trademark infringement under federal law. Other claims might be available depending on the facts, such as unfair competition, false advertisement, etc., but Section 32 of the Trademark Act, which governs infringement claims, expressly provides for relief to “the registrant” only.
- Profits: When a violation of any right of the registrant of a mark registered in the USPTO is established in a civil action, the registrant may recover certain statutory damages, including defendant’s profits. If you do not register your mark, you cannot recover lost profits.
- Ports: You may record your federal trademark registration with U.S. Customs and Border Protection to block imports that infringe your mark or are counterfeits of your goods.
For more information on trademark registration and other trademark topics, please contact Tom Dunn.