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John B.
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Lawrence E. Laubscher, Jr.

 

Ian D. Titley

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Benefits of Mark Registration

Wednesday, November 20th, 2019

There are many potential benefits to federally registering a mark. Below is a nonexclusive list. As you might imagine, there are “in the weeds” details about each benefit, which details are omitted for brevity’s sake.

A Couple of Caveats:

You should have trademark counsel perform mark-clearance research before adopting a mark. If your mark conflicts with the mark rights of others or is weak, you won’t get many of the benefits listed below.

THIS IS CRITICAL: You should have trademark counsel perform monthly mark-infringement monitoring and policing. If you don’t police your mark against infringements continuously and in a timely fashion, your mark can weaken and perhaps die.

The Benefits:

1. Exclusive Right to Mark. Owning a federal mark registration gives you a presumption of the exclusive, nationwide right to use that mark in conjunction with the goods and services listed in the registration. It also creates presumptions that you own the registered mark and that your mark is distinctive. These presumptions are helpful in litigation.

2. The Power to Grow – National Protection. Registration can give you nationwide rights to your mark. It reserves your right to use it across the country, so that you can push away confusingly similar marks for similar goods and services as you roll out business across the country.

3. Can Apply Before Use. You can apply to register a federal mark before you begin using that mark in commerce (this is called an “intent-to-use application”), if you have a bona fide intent to use that mark and do so within about three years of application. Your federal mark rights will be effective from the date of your application even though you might begin using your mark only later.

4. Uncover Problems Earlier. The registration process may uncover problems with your choice of mark that may be much more costly to address later. Companies that proceed on unregistered (common-law) mark rights sometimes run into obstacles after spending a lot of money building recognition in their marks. Usually these companies face a future without attractive mark options and with high legal bills.

5. Puts Others on Notice – Deterrence. Your mark will appear in the online database of the United States Patent and Trademark Office (“USPTO”). This database is usually the first step in clearing a mark for use, so your registration may dissuade others from adopting the same mark or a highly similar mark for the same or similar goods or services. Registration puts others on notice of your mark, which prevents them from claiming in litigation that their subsequent adoption of a confusingly similar mark was done in good faith.

6. Enhanced Damages. In some situations, registration gives you access to a powerful set of remedies against infringers that you do not have without mark registration such as, potentially, tripled damages, statutory damages in lieu of proving actual damages (in the case of counterfeiting), and attorneys’ fees. Whether you can recover such damages and attorneys’ fees is a case-by-case analysis.

7. Enlists the USPTO in Helping to Protect Your Mark. If your mark is federally registered, the USPTO should reject later-filed applications to register confusingly similar marks for overlapping or similar goods or services. You can’t count on the USPTO to do this consistently, but it should. When it does so, such USPTO rejection can save you the substantial legal expense of having to file administrative litigation to stop the problematic registration application. The USPTO will fight the battle for you.

8. Helps to Persuade Infringers to Stop. If a lawyer needs to write to a mark infringer to demand that it stop using a confusingly similar mark, that message will be more persuasive if your mark is federally registered.

9. Coveted Symbol. Only federally registered marks can use the ® symbol. Common law and state marks may use only “TM,” “SM” or similar designations. Using the ® obviates the need to prove actual notice of mark rights when seeking a recovery of profits and other damages.

10. Customs Service. The registration might enable you to use the U.S. Customs Service to attempt to stop the importation of counterfeit merchandise. (See 15 U.S.C. § 1124.)

11. U.S. Marshals Service. The registration might enable you to use the U.S. Marshals Service to interdict counterfeit merchandise.

12. Protect Your Domain Name. If your Web domain name (e.g., Acme.com) matches your registered mark, the mark registration helps to protect against someone taking away your domain name in the future, and against cybersquatters registering, trafficking in, or using an overly similar domain in bad faith.

13. Help on Amazon. In order to participate in Amazon’s Brand Registry and to take action against counterfeits on Amazon, you need a mark registration.

14. Trademark Clearinghouse. You usually need to have a nationally registered mark to be entered into the Trademark Clearinghouse (which is operated by the Internet Corporation for Assigned Names and Numbers). Being entered in the Trademark Clearinghouse is a prerequisite to exercising sunrise registration rights in the new generic top-level domain names.

15. Social Media. It’s easier to attack mark infringements on social media, such as Facebook, Instagram, LinkedIn, and Twitter, if you have a mark registration. They ask for mark registration numbers.

16. Valuable in Sale of Product Line or Business. A registered mark is more easily sold or licensed to other users than a common-law mark, and generally is more valuable than a common-law mark. If you ever intend to sell your business or product line, being able to convey solid mark rights will be important to the prospective buyer.

17. Use as Collateral. Federal mark registrations can be used as collateral in financial transactions. Security interests in registered marks can be recorded at the USPTO.

18. Tax Benefits. When no longer in use, a mark may be abandoned and the associated goodwill may be able to be deducted or depreciated for tax purposes.

19. Foreign Rights. You obtain a six-month grace period from the time of filing your federal mark-registration application to file foreign applications and to have them deemed filed on the same date as your U.S. application. That priority is particularly valuable in countries that grant registration on a first-to-file basis. A U.S. registration also can serve as the basis for seeking trademark registrations in other countries through a centralized international system.

20. Helps Prove Fame. If your mark is famous – a household word – mark anti-dilution laws give it extra protection against mimicry by others. Whether your mark is federally registered is a factor in determining if it’s famous.

21. Immunity Under State Anti-Dilution Laws. Ownership of a federal mark registration generally immunizes the registrant from liability under state anti-dilution laws for the use of such mark.

22. “Incontestability.” If you use a mark for five years after getting it registered and make a filing with the USPTO, the mark becomes insulated from many, but not all, potential challenges to your use of it. In trademark speak, this is called “incontestability,” although this heightened protection is not as strong as that name implies.

23. Protection from Compulsory Alteration. Generally speaking, no state or other governing authority of the United States or any agency may require the alteration of a registered mark.