Registering a Trademark

Register in Other Countries using the U.S. Priority Date

Both Principal and Supplemental Registers

Any business contemplating international expansion must consider registering their trademarks early on. Oftentimes, when a U.S. company is ready for international expansion, the company's trademarks may already be registered in the country of desired expansion. Sometimes this happens because trademark pirates having inside knowledge of expansion plans will quickly register the company's marks in their own name within the country of proposed expansion. Thereafter the pirate coerces handsome royalties for licensing the mark back to the U.S. trademark owner. Pirating can almost always be avoided if U.S. companies federally register their marks early on. This is because the date of registration of the U.S. mark becomes the date of priority in the new country if that country is a member of an international treaty such as the Paris Convention. As such, even if a trademark pirate registers in a country before the company actually expands there, the U.S. company's priority date will usually precede the date of the pirate's registration, thus giving the U.S. company ultimate priority.

Nationwide Priority

Nationwide priority gives trademark protection in a much broader geographical area than you would otherwise enjoy. For this reason, it is frequently cited as the most important benefit of registration. Without federal registration (i.e. under the common law), you must use your mark in a territory in order to have protection there. Since most business do not spread across the country overnight, national expansion is a risky business without a federal trademark. That is because anybody who uses your mark in a different territory than you, and does so prior to your federal registration, will have the ability to stop you from using the mark in the particular region of the country in which they have established their business. If you already find yourself in the situation that there are others using your mark in different regions of the country, all is not lost. You can at least stop their expansion by registering your trademark federally. And if you fail to do so, they may register first and stop you from expanding, even regionally.

Click here for more information about nationwide priority.

Incontestability

Principal Register Only

After five years of continuously using your mark, you can apply for incontestability status. If incontestability is granted, you can eliminate most of the difficult and expensive-to-defend challenges to your mark. For instance, if your mark is incontestable, nobody can successfully argue in a lawsuit or administrative hearing that your mark is confusingly similar to another mark, that it is functional, or that it lacks secondary meaning.

Incontestability status does not mean a mark is attack-proof, however. Incontestable marks are still subject to challenges that: (1) your mark is generic, (2) your mark was obtained through fraud in registration, (3) you have abandoned of the mark, (4) your mark misrepresents the source of goods or services, or it is scandalous in nature, (5) defendant is using your mark in a manner that is a fair use, (6) defendant began using the mark prior to your registration, (7) defendant registered the mark prior to your registration, or (8) your mark is used to violate anti-trust laws.

Eligibility for incontestability status is not automatic, and requires the filing of a section 15 affidavit stating the mark has been in continuous use for five years since registration.

Automatic right to sue in federal court

Both Principal and Supplemental Registers

The owner of a federal trademark registration may sue in federal court more easily. It is worth noting that even without a federal trademark registration you still may be able to sue in federal court, but it may be more costly when proving jurisdiction (i.e. diversity of citizenship & amount in controversy over $75,000). Even if you can't sue in federal court, you can always sue in state court. However, attorneys usually prefer federal court in trademark cases for perceived procedural advantages.

Ability to recover money

Principal Register Only

With a federal trademark registration, it is possible to recover an infringement award for triple the amount of your actual damages, plus attorneys fees if someone infringes your mark. Practically speaking, however, such an award is quite rare, and requires a showing of willful trademark infringement. Nevertheless, it is precisely in these most egregious abuses of your mark that you would like to have the power to recover maximum damages, and doing so is only possible with a registration.

Use of the (R) Symbol

Both Principal and Supplemental Registers

Only those with valid federal registrations are allowed to use the the ® symbol ("encircled R"). Doing so provides constructive notice that the mark is claimed as an exclusive right. As such, the defendant cannot claim innocent infringement, thereby avoiding monetary damages. Use of the encircled R also tells the world that you value and will protect your intellectual property rights. As such, those who wish to avoid trouble will also avoid using your trademark.

Enlisting help from the United States Customs Service

Principal Register Only

Deters others from using your trademark

Both Principal and Supplemental Registers

One of the most important reasons to register your trademark is to let the world know that you claim rights in the mark. The cost of registration is easily paid for on this basis alone. Deterrence occurs in two ways. First, the U.S. Patent and Trademark Office will refuse to register any confusingly similar marks. Second, your mark will appear on trademark searches when businesses contemplate adopting a mark that is similar to yours. Since the vast majority of businesses would rather avoid a lawsuit with you, simply letting them know you're out there could save thousands in litigation down the road. If they only find out about you after they've invested heavily in materials and have created substantial goodwill, they are far less likely to challenge your trademark.

Advantages in Proving Certain Matters in Court

Principal Register Only

A federal registration buys you a shortcut in court; namely you don't have to prove the mark is valid, that you are the owner, nor that you have continuously used the mark in interstate commerce. If you cannot show these things to the court, your case may be dismissed at the outset. It can be costly to prove that you are the true owner (e.g. producing documents of a name change or assignment), that you haven't abandoned the mark (e.g. demonstrating your continuous use or your use in interstate commerce); or that the mark is valid (e.g. proving your mark is not generic, descriptive, or confusingly similar).

Stop others from taking your mark for a domain name

Both Principal and Supplemental Registers

Cybersquatters, or those who would register your trademark as their own domain name on the Internet, may or may not be infringing your trademark rights. However, regardless of whether or not they are infringing, a trademark registration in any country is sufficient to have Internic to put a hold on a domain name until a court decides what to do. It is important to note that it is not only impractical to implement Internic's domain dispute policy unless you have a good case for infringement in court, but some legal scholars have speculated that a policy of trademark misuse could be asserted against you, causing you to loose your trademark rights altogether. Thus, before you wave your registration in front of Internic to capture a domain name, you will want to consult with an attorney experienced in trademark law to determine whether the domain name would in fact infringe or dilute your trademark.

The Intangible "Leg Up"

Principal Register and to Lesser Degree Supplemental Register Both

An opponent will be more intimidated, and a judge or jury more convinced by your position if you have a registration. This is not purely an elusive psychological phenomenon brought on by the power of positive thinking. It is human nature to be influenced by the official stamp of approval that you get with a registration. Moreover, if you have failed to register your mark, it appears to be a subtle admission that you did not consider it a valid mark to begin with. This is particularly true with respect to product design and trade dress cases, where it is sometime hard to separate out where the product ends and the mark begins. Finally, a registration tells potential opponents that you have already invested money in your trademark, and suggests that you are ready to defend your investment.