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Apr 2006
08
April 08, 2006

Benefits of Trademark Registration

Trademarks. A trademark is a symbol of source or quality. It is often thought of as a "brand." It represents the reputation and goodwill of a business or product. In the United States, trademark rights are acquired through use of a mark on goods or services. A trademark may be registered at the state or federal level; however, registration is not necessary to have rights in a mark.1 There are, however, distinct advantages to having a federal or state registration.

Federal Registration. A mark that is in use, or for which there is a good faith intention to use, in interstate commerce (across state lines), may be registered in the United States Patent and Trademark Office (USPTO). There are several benefits of federal registration including:

  1. Registration is constructive notice (nationwide) of the registrant's claim of ownership of the mark. This effectively locks up nationwide rights in the mark from the date of the application. As previously noted, because first use, not registration, controls, rights in a registered mark are subject to any common law rights that exist as of the date of the filing of the application. However, 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.

  2. Registration on the principal register creates a rebuttable presumption of (a) the validity of the registration; (b) the registrant's ownership of the mark; and (c) 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 brought to enforce a trademark.

  3. After five years of continuous use from the date of registration, the mark can be granted "incontestable" status. Incontestability precludes an attack on the registrant's ownership of the mark on the basis of prior use or descriptiveness.

  4. An application for federal registration can be filed even before use of the mark has begun, if the applicant has a good faith intention to use the mark. Thus, if a mark is chosen significantly before the product or service will actually be on the market, a company can still stake its claim to the mark before using it. However, the mark has to be in use before any registration will be issued.

  5. The registrant has the right to commence an action for infringement in federal court.

  6. The registrant may list the registered mark with U.S. Customs to prevent the importation of goods bearing an infringement of the mark.

  7. The registration can be used as a basis for registering the same mark in foreign countries.

  8. Anyone doing a trademark search, even a preliminary one, will learn of the registrant's rights in the mark which should dissuade them from using the same or similar mark for the same or similar service.

State Registration. A mark may also be registered at the state level. If a mark is not used in interstate commerce, a state registration is the only other registration option. Unlike a federal registration, a state registration does not necessarily secure rights in the entire state. Also, in contrast with federal registration, a state trademark application must be based on actual use, and may not be done on an intent-to-use basis. Additionally, a state registration does not create a presumption of ownership of the mark. Thus, benefits of a state registration, as compared to a federal registration, are limited, but include:

  1. A state registration also puts the claim to a mark on an official registration. The mark is likely to be discovered by others conducting searches and, as a result, will discourage the adoption and use of confusingly similar marks by others.

  2. The filing fees for a state registration are significantly less than the fees for a federal registration.

If you have any questions, feel free to contact your WN&J attorney or Jim Scott at 616.752.2469 or jscott@wnj.com; or Scott Keller at 616.752.2479 or skeller@wnj.com.

1This is not the case in every country in the world. In some countries, the only way to acquire trademark rights is through registration.

 

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