Benefits of a Federal Trademark Registration
By: Matt McLauchlin
Should you Federally Register Your Trademark?
Your company’s trademark can be one of the most valuable intangible assets the company holds. It symbolizes the value that your business delivers to its customers. Therefore, protecting your trademark can be a very important action to take as part of your overall plan to grow and protect the value of your business.
The list below describes some of the benefits of a federal trademark filing:
1. Nationwide Priority and Protection and Ability to Expand the Reach of your Brand.
A business has automatic exclusive “common law” rights in its trademark in the particular region in which it operates, without a federal registration as long as it is using the trademark in commerce and was the first to do so in its region. Depending on the nature and scope of your business, it may or may not be necessary to federally register your trademark to obtain national protection. For instance, a local plumbing company that services a small town and has no plans to grow beyond its region likely would not need or want to federally register a trademark and may instead choose to rely on its common law rights. In contrast, a manufacturer/distributor of cookies that sells online across the nation may very well want to consider a federal trademark registration. If you plan on expanding your business into new regions, a federal trademark registration will ensure that your brand will be protected nationwide. You will have the exclusive nationwide right and priority to use the trademark in connection with the services or goods you list in the registration.
2. Notice of Ownership and Deterrence from Competing Trademarks.
When you register your trademark, it will be listed on the US Patent and Trademark Office (USPTO) database of registered and pending trademarks. This provides public notice to anyone searching for similar trademarks. A competing business performing a trademark search will see and have notice of your trademark, the goods and services on your registration, the date you applied for trademark registration, and the date your trademark registered. This will be a deterrent from someone trying to use a similar trademark.
In addition, although the USPTO is not an enforcement agency, one of its functions is to prohibit filers from registering trademarks that are confusingly similar to already registered marks for the same or similar services or goods. Because the USPTO will refuse to register a confusingly similar mark, it therefore provides a type of policing to protect registered trademarks.
3. Legal Presumption of Ownership and Validity.
Federal registration of your trademark provides a legal presumption that you own a valid trademark and have the right to use it. This is valuable in any litigation over the use of the mark as it can eliminate the need for costly presentation of voluminous evidence on these issues.
4. Avoidance of Expensive Lawsuits.
It is often easier to stop potential infringement when you have federally registered your trademark. For example, sending a letter to a social media company asking it to take down a page using your trademark is easier when you have a federally registered trademark. The social media company is more likely to recognize and honor valid federal trademark rights. This prevents costly litigation and providing “proof” that you are the legitimate owner of the trademark with nationwide rights.
5. Right to use the ® symbol.
Federal registration provides you the right to use the ® symbol with regard to the listed products or services. This symbol provides marketing value and provides notice the company is more sophisticated or serious about protection of its brand. This can also increase company goodwill value. The symbol® also provides notice to any competitors that the mark is protected and adds deterrence value.
6. Basis for Filing for Trademark Protection in Foreign Countries.
Because the US is a party to the Madrid Protocol, this allows a registered US trademark owner the opportunity to extend its trademark protection to other countries that are also part of the protocol.
7. Right to Sue in Federal Court and Obtain Damages and Attorneys’ Fees.
A federal trademark registration allows you to sue someone infringing on your trademark in federal court for infringement. Federal courts are typically versed in trademark law more so than state court judges. Additionally, you can be entitled to monetary damages, injunctions, and treble damages in cases of willful infringement, as well as attorney’s fees in certain cases.
8. Ability to Record your Registration with U.S. Customs and Border Protection (CBP).
Once you register your trademark, you can also then register it with CBP, which has the power to seize and destroy counterfeit products with an infringing mark before they come into the marketplace in the U.S.