Proactive Trademark Practices for Companies – Part 4 Benefits of Federal Trademark Registration

Benefits of Federal Trademark Registration

Once your trademark attorney has completed a comprehensive search and counseled you on the best choices, then you can ask him/her to file trademark applications for you. Unless properly and thoroughly trained, having an experienced trademark attorney prepare, file, and prosecute your trademark applications can be well worth the fees. Skilled attorneys will be able to determine proper class designations, create broad but acceptable identifications of goods and services that are specific enough to identify the nature of the products and/or services, file acceptable trademark drawings and appropriate specimens of trademark usage, and provide other services that will avoid or mitigate future problems during the registration process and at other times during the lifecycle of your trademarks and business.

If at all possible, a company should seek federal protection for their trademark by filing and registering it on the Principal Federal Register. Federal registration will not take away territory already used by others, but it may prevent or deter expansion. Federal trademark applications can be electronically filed as one of two types: a) “Bona Fide Intent-To-Use” applications; or b) “In Use” applications.

There are many situations where a company may want to file an application to register a trademark on an “intent-to-use” basis before actually using the mark in commerce. For example, an “intent-to-use” application may be filed when: products or services are being developed for eventual sale or provision in interstate commerce; products or services are being sold or provided locally (within one state) that will be expanding to interstate commerce; or products or services are being sold or provided in interstate commerce under another trademark that you intend to sell under the new trademark, if it is allowed for registration.

There are also many advantages to filing an application under an “intent-to-use” basis. With an “intent-to-use” application, you can get most or all of prosecution of the application finished before actually putting the trademark into interstate commerce. In this way you can be assured that the trademark is registrable before investing a great deal of time and money into the advertising and promotion of goods and services under that mark. Additionally, the filing date of your “intent-to-use” application establishes your priority in your claim to the right to register the mark over others who may subsequently apply to register the same or similar marks. Furthermore, an “intent-to-use” application may be divided so that the mark may be registered for use with one or more classes of goods and/or services, while the application for registration in connection with the other goods and/or services remains pending. Finally, arguably most importantly, provided you ultimately use the trademark in interstate commerce, and the application matures into registration, the seniority of your rights in your trademark begin from the application’s filing date rather than from the date of actual first use.

While a company obtains certain limited common law protections for its trademark once it is used in commerce, the benefits of federal registration are a compelling incentive for a company that is serious about protecting its brand identity. Federally registered marks cover the entire U.S. with its territories and possessions. Federal registration greatly expands the bundle of rights held by a trademark owner. Following are some of the advantages U.S. trademark registration on the Principal Register offers:

1. Ownership

Registration is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in commerce with the goods or services listed in the registration. This can save substantial time, money and effort in any litigation.

2. Right to Use

The filing of a federal application constitutes constructive use of a mark, and confers nationwide priority over use of that mark to the applicant, so long as the applicant has used the mark or has a bona fide intention to use the mark in commerce. Once the application is filed, no one else can create rights from that date forward in the mark for the same goods and services anywhere else in the country, even if the registrant has not used the mark there yet. Registration of a trademark, on the other hand, constitutes prima facie evidence of the registrant’s exclusive nationwide right to use the registered mark on goods and services specified in the registration.

3. Likelihood of Confusion

There is a presumption that the registered mark, as applied to the goods or services specified in the registration, is not confusingly similar to the marks of prior federal registrations, as applied to the goods or services specified in those prior registrations.

4. Distinctiveness of the Mark

There is a presumption that a trademark registered on the Principal Register was distinctive at the time of registration, even if the mark has descriptive, geographic or other significance.

5. Notice

Registration constitutes constructive notice to third parties of the registrant’s ownership of the mark. While a trademark owner may, under common law, use the ™ symbol to put others on notice that they are claiming trademark rights in a mark, federal registration allows a registrant to use the ® symbol to notify others that the mark is so protected.

6. Incontestability

If a trademark is used, uncontested, for five years from registration, the mark becomes “incontestable” upon the filing of a declaration of such use, and may only be challenged under certain limited, specified conditions.

7. Federal Court Jurisdiction

A trademark registrant may file claims of trademark infringement in federal court, even in the absence of diversity of citizenship, and may seek an injunction, or damages, or both. If goods are being sold under a mark that counterfeits a mark registered on the Principal Register, a United States Attorney may bring a civil action requesting that the counterfeited goods be seized to prevent further harm to the rightful trademark registrant.

8. Damages

It is within the court’s discretion to award a registrant lost profits for trademark infringement, as set forth in the Lanham Act, and may award “treble damages” (up to three times the actual damages proven in court). In exceptional cases, the court may also award attorney fees.

9. U.S. Customs

Registered trademarks may be recorded with the U.S. Customs Service to stop the importation of goods bearing infringing marks.

10. Deterrence

The U.S. Patent and Trademark Office will refuse to register any confusingly similar trademarks that may infringe on a registrant’s trademark. Additionally, anyone doing a trademark search should discover the registrant’s trademark and be dissuaded from using the same or similar mark for the same or related product or service. Furthermore, an opponent will be more intimidated, and a judge or jury more convinced by your position, if you have a registration. A registration also suggests that you have already invested money in your trademark and that you are ready to defend your investment.