Many people ask “Why do I need to register my trademark?” True, the owner of a mark will obtain some measure of common law rights by simply using a mark, but these rights are limited in scope when compared to the more important rights conferred by a Federal trademark registration.
One of the most important benefits of Federal registration is that a registration creates a legal presumption that you own that mark and have the exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in your registration. Therefore, a Federal registration confers exclusivity and for another party to claim otherwise and contend that a trademark owner does not have such rights requires a potentially significant showing.
Additionally, a United States Federal trademark registration confers trademark rights in all States and U.S. Territories. An unregistered mark might be limited by state law and protect against uses in only those places where the mark is actually used. Because common law rights are location specific, it may be possible for someone to use a mark in say Florida and another person to use the same mark for the same goods in California.
Notice to Third Parties
Further, a Federal registration provides constructive notice to the public of your claim to rights in a mark. In other words, once you register your mark with the USPTO, knowledge of the mark is imputed on others and a defense claim based on “I did not know you owned this mark” may likely be precluded.
Beyond this, the Trademark Act provides for applicants to file for registration before using a mark, on the basis of Intent to Use. Once registered, rights in a mark filed on this basis will relate back to the date the application was filed. Unregistered marks are only enforceable if and when used in commerce. The Intent to Use provision of the Trademark Act thus gives applicants potentially greater rights than the common law.
Extensive Rights and Remedies
As for rights and remedies, a Federal registration will allow a mark owner to sue for infringement under the Federal Trademark Act. The Trademark Act provides a number of rights and remedies for owners of Federal registrations that are unavailable otherwise. Among these rights are rights for damages, injunctive relieve, punitive damages and recovery of attorney fees. While common law rights do provide some of these remedies, the scope of the remedies is not near as broad as the Trademark Act provides.
A United States Federal registration also provides potential International benefits. A U.S. registration owner can use a Federal Registration as a basis for filing and obtaining trademark registrations in foreign countries.
Last, and of particular importance to many businesses, a trademark owner can record its registered marks with U.S. Customs to help prevent importation of infringing and counterfeit goods into the U.S. Recordation with Customs will allow Customs to detain potentially problematic imports to determine their authenticity or to prevent them from entering the domestic market.
As you can see, there are a number of significant rights provided by Federal trademark registration and all trademark owners should at least consider Federal registration over relying only on common law rights. We can help devise U.S. and International registration strategies based on your particular requirements. Contact us for more information.
Photo Courtesy of Tup Wanders on Flickr