Trademark Registration - Experienced Attorneys explain the purpose and value
Benefits of Applying to Register your Trademark or Service Mark
Many entrepreneurs wonder about the value of a trademark registration and whether it makes sense to incur the cost of filing and prosecuting an application to register their trademarks or service marks
. This is understandable, since it is the marketing and quality of goods or services that brings customers into the business, not a trademark registration. However, business owners and entrepreneurs need to understand that trademark registrations protect the brands that they have built through extensive time, energy, and funds spent on creating its marks and branding, advertising the brand, and training employees to produce quality goods and/or provide quality services.
A business owner does not want a competitor or other third party in its market or in other geographic areas (particularly potential areas of market growth) to adopt a mark that is confusingly similar, potentially creating inadvertent or intentional brand confusion with the business’ goods and services. Filing an application to obtain a federal registration of a trademark or service mark establishes nationwide priority over any third party later attempting to use or apply for registration of the same mark or a confusingly similar mark. And, if the US Patent and Trademark Office (USPTO) approves the mark for registration, it provides a nationwide right to exclude others from using the mark in connection with the goods and/or services identified in the application. This exclusivity of use is a primary benefit of a trademark registration. The right to exclusive use cuts off the risk of a Johnny-come-lately business lawfully adopting a confusingly similar mark in the same market or another US market. This is a powerful tool for protecting the branding and reputation of a business.
A trademark or service mark registration also allows its owner to sue those using confusingly similar marks for infringement with a legal presumption that the owner’s registration is valid, thus putting the burden on the infringer to try to attack the validity of the registration and/or show that the infringer is justified in using its mark. The registration also allows the owner to obtain powerful remedies such as an injunction barring the infringer from further use of the infringing mark.
There are also several additional benefits provided by trademark registrations, which are outlined below:
Trademark ® Symbol Use:
The ® symbol can be lawfully used on only registered trademarks and service marks. The ® symbol is universally recognized as an indication of proprietary rights in a mark, and provides notice to third parties of the registrant’s exclusive rights in the mark. The ® symbol also provides some cachet to the owner’s brand in the eye of the consumer and the market. It indicates that the owner takes its business seriously and plans to maintain a quality, long-standing brand.
Constructive Notice of Trademark Rights:
Under section 22 of the Lanham Act, registration of a mark puts everyone on notice of the registrant’s use of the mark. If a third party uses a confusingly similar mark, he cannot avoid liability by claiming (truthfully or not) that he was unaware of the registration. When a trademark or service mark is registered with the USPTO, liability arises without actual knowledge of the owner’s ownership of the mark as long as the ® is placed next to the registered mark in connection with the owner’s goods or services.
Better Deterrence of Trademark Infringement:
Trademark and service mark registrations are published through the Trademark Electronic Search System (TESS) database and the Trademark Status & Document Retrieval (TSDR) system provided by the USPTO. This allows anyone to search existing trademark applications and registrations to see whether there are any pre-existing uses of their proposed mark or confusingly similar marks. The TESS and TSDR system thus provide a convenient means for businesses to vet their trademarks before they commit to using them, thereby avoiding the adoption of marks that are confusingly similar to prior registrations and reducing the number of infringements. Of course, not every business is aware of the TESS and TSDR systems or cares to use them. But, for the wary and scrupulous, the TESS and TSDR systems reduce the risk of infringement disputes.
Social Media and Internet Commerce:
Trademark registrations are becoming increasingly important for businesses who rely on internet advertising and commerce. For example, Amazon launched a brand registry service for businesses protects their brands and products from trademark infringement and/or counterfeit goods on the Amazon platform. However, Amazon will only allow a business on the brand registry if it has a US trademark registration for the trademark associated with the brand. Additionally, trademark infringement can often happen on social media platforms like Instagram, Facebook, and Snapchat. As examples, another business may use a social media account to advertise its products or services with a username (a “handle”) that is confusingly similar to your trademark and/or your username, or another business may sell goods through a social media platform under a confusingly similar mark. These social media platforms generally will not remove accounts or content from their platforms (through a “takedown request”) on the basis of trademark infringement, unless they are provided with a trademark registration.
Customs and Border Protection Enforcement of Trademark Rights:
A trademark registration can be recorded with the US Customs and Border Protection (CBP)
, enabling the CBP to block imports that infringe the registered mark or feature a counterfeit use thereof. The CBP enforces US trademark registrations without costs to the owner of the registration. The CBP has legal authority to make infringement determinations and to detain, seize, examine, forfeit, and destroy infringing goods, pursuant to such determination. The CBP takes intellectual property rights seriously and makes many thousands of seizures of infringing goods each year. The owner of a trademark registration can aid the CBP’s enforcement by notifying the CBP of a known infringement through an online notification portal here.
A US trademark registration is likely more attractive to a potential licensee than a common law trademark because the registered mark holds nationwide exclusivity. Common law trademark rights are limited to the specific geographic area in which they are used in commerce. Additionally, a trademark license can be recorded with the USPTO, giving the licensee officially recorded rights. If the license so allows, the licensee may have the right to institute legal proceedings itself and thereby police the market for infringing marks.
Intangible Intellectual Property Asset:
A trademark or service mark registration creates a legally recognized intangible property that can be easily identified on a list of assets for a business.
Security for Financing:
A trademark registration can be pledged as security to secure loan facilities much the same way as tangible property. The use of intellectual property assets as a source of financing has grown to be a common practice. Companies routinely leverage their IP assets, including trademarks, to obtain financing and lenders are generally willing to accept such assets as collateral.
Foreign Trademark Rights:
A trademark or service mark application filed in the US can be used as a basis to obtain a registration in a foreign country with the benefit of the US filing date, if the foreign application is filed within six months of the US application. The US registration provides a starting point for protecting a business’s trademark rights in a multi-national or worldwide scope.
Legal Remedies for Trademark Infringement
In the case of counterfeiting, a trademark registration allows the owner to recover up to triple the actual damage amount (treble damages) and attorney’s fees. Alternatively, the owner can pursue statutory damages of $1,000 to $200,000 per type of goods or services sold, offered for sale, or distributed. The statutory damages remedy relieves the owner from having to demonstrate actual damages in order to receive a monetary award.
Trademark registrations are an invaluable tool for protecting the brand and reputation of a business. For most businesses it is well worth the monetary investment to pursue a trademark registration. While many businesses attempt to pursue trademark registrations without the assistance of an attorney, there a many subtleties in the requirements, rules, and process for obtaining a registration that may prove treacherous for the unwary. The USPTO regularly recommends that applicants seek the assistance of an experienced trademark attorney in pursuing a trademark registration, and provides explanations of the benefits of hiring a trademark attorney here