The Advantages of Trademark Registration

Trademarks (or servicemarks) allow people to identify the source of goods or services, not the products or services themselves. When people see your trademark, they will know where the product came from or who is providing the service. Trademarks can be names, symbols, packaging, the shape of a product, the colors of a product, the sounds, or scents associated with the product, or any combination of these. If a customer can identify the source of a product or service based on the trademark, then you have developed “secondary meaning” and have a strong trademark. To promote, protect, and keep your business from being confused with another, you should consider establishing a trademark for your business. Once you obtain a trademark, you should vigorously defend it. Then, no one in your line of business can use your trademark.

Rights to use a trademark come from using the mark in commerce with the product or service. You may use the TM symbol immediately with your trademark, but you may only use the ® symbol after federally registering the trademark.

On the federal level, you apply for trademark registration with the United States Patent and Trademark Office (“PTO”). If your trademark meets certain requirements, your trademark is registered either on the Principal Register or the Supplemental Register. Marks may be registered on the Principal Register if they are shown to distinguish the applicant’s goods and services. Marks may be registered on the Supplemental Register if they pass the more moderate test of being “capable of distinguishing applicant’s goods or services.”

Registration on either the Principal or Supplemental Registers:

1. allows the owner of the registered mark to use the registration symbol ® to deter infringers and impress customers (who may wrongly think that ® implies some sort of government approval);
2. provides protection under §39(b) of the Lanham Act against state restrictions on use of the mark;
3. gives priority rights in registering in foreign countries according to the provisions of international treaties; and
4. places the mark on the PTO database and website at www.uspto.gov to serve as notice and may prevent others from adopting the same or similar mark.

Registration on the Principal Register provides the following additional advantages:

1. provides constructive notice to those who might later adopt the mark;
2. is prima facie evidence of the mark’s validity and registration as well as evidence of the registrant’s ownership and exclusive right to use the mark in commerce;
3. allows the mark owner the right to ex parte seizure of goods bearing a counterfeit mark (“a spurious mark that is identical with, or substantially indistinguishable from, a registered mark”);
4. gives the owner the right to treble damages (a multiple of actual damages) and attorneys’ fees against intentional use of a counterfeit mark, in the absence of extenuating circumstances;
5. provides a deterrent effect of severe criminal penalties for the use of counterfeit marks;
6. allows the owner to have the Bureau of Customs exclude imports bearing infringing marks; and
7. gives the owner the right to apply to have the mark declared “incontestable” (although it can still be challenged, it is the highest form of protection available) after five years on the Principal Register and compliance with certain formalities.

Registration of the mark on the Supplemental Register, while not providing the more expansive protection of a mark registered on the Principal Register, will provide the following benefits to the registrant:

1. allows the owner to file an infringement action in federal court;
2. gives the PTO the ability to cite the mark against a later application by a third party for a substantially similar mark on the Principal Register;
3. provides the owner the opportunity to have the mark registered on the Principal Register. This can be accomplished by showing that the mark has acquired “secondary meaning.” A showing of secondary meaning may be demonstrated once the mark has been in use for a period of time, usually five years.

In sum, registering your trademarks with the United States Patent Trademark Office offers many advantages and can help you take advantage of your strong business reputation.

The information provided here is for educational purposes only. If you have legal concerns or need legal advice, be sure to consult with an attorney who is licensed to practice in your jurisdiction.