Trademarks

Seven benefits of Federal Trademark Registration

A federally registered trademark can be a very valuable intellectual property asset. If you currently produce or intend to produce a product, provide a service or operate a web site on the internet, and if you engage or will engage in interstate commerce, you should consider applying for and obtaining a federal trademark or service mark to identify the source of your goods or services. The primary register of trademarks is maintained by the United States Patent and Trademark Office. It is governed by Subchapter I of the Lanham Act, Title 15 of the US Code.

Marks that are registered on the U.S. Patent & Trademark Office's (USPTO) Principal Register have the following benefits:

1. Registration is constructive notice that the owner (registrant) of the mark has the right to use the mark throughout the entire United States, even if the mark is not being used in a specific geographical area. 15 U.S.C. § 1057(c) and 15 U.S.C. § 1072. This means that the registrant can prevent a person or entity from using the same mark or a confusingly similar mark anywhere in the U.S. unless the other mark was used before the date of first use of the registered mark.
2. Registration is prima facie evidence that the registered mark is valid, the registrant owns the mark and has the exclusive right to use the mark in commerce. 15 U.S.C. § 1057(b) Registration is prima facie evidence that the mark has been used continuously in commerce since the filing date of the application. Rolley, Inc. v. Younghusband, 204 F.2d 209, 211 (9th Cir. 1953).
3. After five years of continuous use in commerce, the mark becomes incontestable, which means that the registration of the mark cannot be attacked on the basis of prior use or descriptiveness. 15 U.S.C. §1065.
4. The registrant of the mark may sue for trademark infringement in federal court when diversity does not exist. 15 U.S.C. § 1121(a).
5. In a successful trademark infringement action, the registrant may obtain increased statutory damages. 15 U.S.C. § 1117 and 18 U.S.C. § 2320.
6. The registrant may use the power of the federal government (via the U.S. Customs Service) to prevent the importation of goods that contain infringing marks. Availability of criminal penalties, seizures and treble damages in an action for counterfeiting a registered trademark. 15 U.S.C. Section 1124.
7. A basis for filing trademark applications in foreign countries. Certain rights under the Paris Convention assist overseas registration of the mark.