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While there are several advantages to registering a
trademark, conspicuously absent from the list of benefits is the ability to
acquire a trademark. You acquire a mark in the United States by using it, not by
registering it. Registration, then, has everything to do with enhancing the
rights already granted by virtue of using the mark.
It is important to understand that many benefits of registration are only
available to marks that are registered on the Principal
Register as opposed to the Supplemental
Register. In order to qualify for registration on the Principal Register a
mark must be: (1) in use; and (2) distinctive.
Marks registered on the Supplemental Register may later be listed on the
Principal Register once they meet these requirements.
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Principal
Register
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Supplemental
Register
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| Nationwide Priority |
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Yes |
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No |
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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.
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| Incontestability |
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Yes |
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No |
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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.
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| Automatic right to sue in federal court |
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Yes |
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Yes |
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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. |
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| Ability to recover money |
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Yes |
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No |
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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. |
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| Use of the ® Symbol |
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Yes
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Yes |
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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. |
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| Enlisting help from the
United States Customs Service |
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Yes |
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No |
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The owner of a federal trademark registration can
receive invaluable assistance from the U.S.
Customs Service against unscrupulous importers of counterfeit
or gray
market goods. This assistance is not
automatic, however, and the trademark owner must record their
registration with U.S. Customs, and in many cases have to help Customs
with tracking such illegal activity. |
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| Deters others from using your trademark |
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Yes |
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Yes |
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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. |
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| Advantages in Proving
Certain Matters in Court |
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Yes |
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No |
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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). |
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| Provides a tool to stop
cybersquatters from taking your mark for a domain name |
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Yes |
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Yes |
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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 Network Solutions
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 Network Solutions' 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 Network Solutions 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. |
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| The Intangible "Leg Up" |
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Yes |
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Yes (limited) |
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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. |
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| Register in Other Countries using the U.S.
Priority Date |
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Yes |
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Yes |
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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. |
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