March 1, 2014

Basics of Trademark Registration, Part One

1. Background

A trademark or “mark” is the legal term for a brand name. Trademarks identify a company’s products or services and distinguish them from products and services provided by other companies. Many things can serve as trademarks, including words, slogans, symbols, designs, product shapes, and product packaging. Even smell, sound and color can be protected as trademarks. The traditional definition of a “trademark” applied only to marks used to identify goods (and not services). Increasingly, however, the word “trademark” is used to describe service marks as well. A service mark is a mark used to identify services. The legal rules applicable to service marks and trademarks are the same.

2. Benefits of Federal Registration

Federal registration with the U. S. Patent and Trademark Office (USPTO) is not required to obtain legal protection for a trademark. Trademark rights protected by state and federal common law may be acquired by simply using the mark to identify goods or services. Trademark rights within a particular state may be obtained through state trademark registration. However, there are important legal and practical benefits to federal trademark registration. The legal advantages include:

  • Legal presumption of ownership of the registered mark. 
  • Legal presumption that the registrant has exclusive rights to use the registered mark nationwide. 
  • Legal presumption that that registered mark is not confusingly similar to other registered marks. 
  • The right to bring lawsuits for trademark infringement in federal courts. 
  • Eligibility for up to treble damages in a trademark infringement lawsuit. 
  • The trademark registration may be filed with the U.S. Customs Service to prevent the importation of infringing foreign goods. 
  • The trademark registration can be used as a basis for obtaining a trademark registration in foreign countries.

On a practical note, your ownership of a federal trademark registration can dissuade any third party from claiming that you do not have the right to use your trademark. As noted above, anyone trying to stop you from using your registered trademark will have to overcome – in court – the legal presumptions of ownership and right to use that a registration provides.

Ownership of a registration can also be used offensively to help you swiftly persuade infringers to stop use of your trademark. If a company believes a third party is making unauthorized use of its trademark, that company will typically begin by sending a “cease and desist” letter to the third party. If the company owns a federal registration for its trademark, it will enclose a copy of the federal trademark registration certificate with the “cease and desist” letter. The trademark registration certificate sends a powerful signal to the infringing third party (as well as to the third party’s legal counsel) that the infringer will have a difficult time defending against a lawsuit filed by the owner of the federal trademark registration.

Thus, ownership of a federal trademark registration may help persuade the infringer to stop use of your mark – without the time, effort and legal expense of bringing a lawsuit to stop the trademark infringement.

This article continues with 'Basics of Trademark Registration - Part Two', where trademark clearance and trademark application are discussed.  


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