Federal trademark registration is not required to claim your business’s name or logo as a trademark but it does offer your business the most protection. Using your name or logo in commerce without a federal registration gives you limited trademark rights in your geographic area but federal registration with the United States Patent and Trademark Office (USPTO) has several advantages, including:
1. Nationwide protection of your mark. This means you are the only business that may use your mark nationwide in connection with the goods or services you provide, rather than only in your geographic area. This is especially important in an era when many goods are offered for sale nationwide through websites.
2. A legal presumption of your ownership in the mark. This can prevent a costly dispute over ownership rights down the road.
3. The possibility of “incontestability.” After continuously using a registered mark for five years, you can file to have your mark deemed “incontestable.” This prevents others from raising several challenges to your mark, including claiming that your mark is confusingly similar to another mark that was being used before your registration. By eliminating these challenges, you can save a great deal of money defending against these claims. Also, a cease and desist letter based on an “incontestable” mark carries substantial weight.
4. Nationwide notice of your ownership. Once approved, your mark will be published in the USPTO database. Anybody may search this database through the USPTO’s website. Therefore, businesses that see your mark will likely choose not to use a similar mark. This gives others constructive notice of your ownership and reduces the risk of costly litigation in the future.
5. Use of your registration to refuse confusingly similar marks. The USPTO will refuse to register confusingly similar marks that appear to conflict with yours. If another person or business tries to register a confusingly similar mark, the USPTO has a duty to cite your mark against that application.
6. An automatic right to sue in federal court. A federal registration is not required to file a trademark infringement lawsuit but it does give the trademark owner a legal right to bring a federal lawsuit. Without registration, a trademark owner must use other routes to get into federal court or resort to state court.
7. Maximization of damages. In certain cases, statutory damages, treble damages, and attorneys’ fees are available to trademark owners with a federal registration. These damages are not common but, nonetheless, are not even available unless the mark is registered with the USPTO.
8. Prevention of imported, counterfeit goods. A federal trademark registration may be filed with the U.S. Customs and Border Protection Service, which will monitor imports for counterfeit, infringing goods.
9. A basis to obtain registration in foreign countries.
10. The ability to use the ® symbol. Although anybody claiming rights in a mark may use the TM symbol, only those with a federal registration may use the ® symbol.
Registering your trademark is a proactive step towards maximizing your rights in the mark while saving potentially thousands of dollars in litigation costs in the future. Without a federal registration, your rights and remedies are limited and your ability to assert them could be more difficult and, likely, more costly. If you have any questions about the trademark registration process, or if you need to register your mark, contact one of our attorneys today.
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