Federal trademark registration confers a number of important advantages. In fact, the 1946 Lanham Act that created the registration system never anticipated the benefits modern trademark registrants enjoy. For example, these include trademark control on Amazon’s Brand Registry and preferential status in domain name disputes. Moreover, registration provides presumptive owner status in dealing with infringing advertising through Google’s trademark infringement system.
Benefits of Federal Registration
What has never changed is the importance of trademark protection. The most valuable asset of a company is often its brand. Unlike other assets that depreciate with time, properly maintained trademarks may increase in value. Smith & Hopen® is an AV-rated intellectual property law firm based in Tampa Bay, Florida with over 20+ years experience in the federal trademark process. Altogether, we protect billions of dollars in assets and goodwill through the federal trademark system. As a matter of fact, we are among the most prolific trademark lawyers in Florida. Indeed, we maintain and prosecute thousands of federal trademarks before the USPTO.
Seven (7) Advantages of Registration
The Lanham Act provides indispensable advantages to brand owners with federal trademark registrations. Moreover, these advantages include national rights, incontestability, enhanced remedies, presumption of validity, constructive notice, federal court access and importation protection.
In particular, federal registration provides the legal effect of having using the trademark in all 50 states and U.S. territories at the time of filing. This priority claim overrides later common law usage.
Few things in the law can earn the moniker of “incontestable” but most registrations can achieve this which removes many important defenses to infringement claims. Significantly, this is one of the very few circumstances where statutory law permits quiet title of an intellectual property asset. Accordingly, this may be one of the most important long-term advantages of federal trademark registration.
Trademark registration confers enhanced recovery options. In addition, the registration helps significantly in domain name disputes and administrative handling of brands by Amazon, Google and Facebook.
Registered trademarks are presumed valid and provide evidence of seniority. Accordingly, there is greater leverage in asserting trademark rights as a plaintiff when the burden shifts to the alleged infringing defendant.
To be sure, ignorance is not a defense to a federally registered trademark. Once registered, all infringers have “constructive” notice of its existence. In other words, the presence of a registered trademark in the USPTO database often prevents a potentially innocent infringer from unknowingly adopting the registered trademark.
Federal trademarks can be used to stop infringers through the Department of U.S. Customs and the International Trademark Commission (ITC). Obviously, bringing an ITC action typically requires legal counsel. However, the enforcement arm of the ITC is the law enforcement branch of U.S. Customs. Therefore, obtaining a “take” order from the ITC can be a dramatic advantage for a company holding a federal trademark registration.
Trademark infringement cases may be brought in either state or federal court when the mark is federally registered. Accordingly, the trademark registration owner (plaintiff) has more flexibility in selecting the best venue for the case.
You Cannot Afford to be Unregistered
Federal registrations provides a way to “perfect” your ownership interest in an asset. This is a key benefit to trademark registration. Unlike copyrights and patents that decline in value as they near expiration, trademarks appreciate in value. The marketing, goodwill and recognition of a brand is “captured” in the federal trademark registration.
Dangerous Consequences of Non-action
When a trademark has been registered for five (5) years is can be rendered “incontestable.” A key aspect of incontestability is to quiet title to ownership. Therefore, a junior user of your trademark that obtains a federal registration has given you constructive notice of their registration. This means you should have known it existed. Because you did not oppose or attempt to cancel the junior user you’ve lost forever the ability to have national rights. You only have common law rights to keep using your trademark in your geographic area. Accordingly, this is a devastating blow to trademark owners that look to expand into other markets.
A Race to the USPTO
Federal priority rights are granted upon the date filed. Moreover, this can come back to the time of day it was filed. We’ve had instances in which one application was filed merely hours before a second that was virtually identical. Each trademark application is awarded a sequential serial number. It was a simple matter for the trademark examining attorney to determine which application was filed first. The party that waited just a few hours longer lost out.
All Hope Not Lost
If you find your trademark is already exists do not presume all is lost. Some trademark registrations are dead wood meaning the owners have abandoned them. Another issue is validity. Many trademark registrations are invalid. This is particularly true for trademarks filings without an attorney. Many times the application names a non-existent or dissolved company. Yet another issues is that poorly filed trademarks include color, unnecessary designs or claim an excessively narrow vertical market. An experienced, well-informed attorney spots these issues.
The brand you associate with your products and services is your identity. Accordingly, every dollar invested into marketing, advertising, customer support and quality control adds value to your brand. Good businesspeople have an exit strategy. They build up value in their reputation from on years of effort. Probably no business asset is more valuable than the trademark. Without a doubt, protect it well.
A trademark registration can last indefinitely. However, there are a few requirements to maintain the registration. One requirement is that you continue to use the mark in commerce. The other main requirement is that you continue to renew the registration. If you do those things, and assuming your mark does not become genericized, your trademark registration can last indefinitely.
In fact, the oldest trademark registration in the United States dates back to 1884 and is owned by Samson Rope Technologies, Inc. Samson’s trademark is a combination of a design element and the word SAMSON. The registration covers the company’s “cords, lines, and ropes” products. You can see the trademark below.
Because Samson Rope Technologies has continued using its mark in commerce and continued renewing its registration, its registration is over 135 years old. It will be interesting to see how long this registration will last.
More information on renewals
You must renew your trademark registration between the 5th and 6th years after registration, another 5-6 years after that, and then every 10 years after that for as long as you use the mark. For each renewal, you must show the United States Patent and Trademark Office (USPTO) that you are continuing to use your mark in commerce. If you fail to file your renewal documents, your registration will go abandoned.
Requirements for use of the registration symbol
You may only use the trademark registration symbol if you have an official trademark registration certificate. You can obtain an official trademark registration certificate from the U.S. Patent and Trademark Office (USPTO). The (R) symbol serves to inform others of your registration. However, you cannot use the (R) symbol if you do not have a registered trademark.
Benefit of using the registration symbol
Under the current state of the law, use of the registration symbol establishes that the defendant in a trademark infringement case had constructive knowledge of the trademark registration. In a trademark infringement case, a trademark owner will forfeit the right to recover lost profits and damages unless the trademark owner can establish that the infringer had knowledge of the trademark registration prior to the infringement. Proving actual knowledge can be extremely difficult. However, the trademark owner can establish constructive knowledge if the registration symbol was displayed in connection with the trademark. Even if the infringer did not have actual knowledge of the registration, it is reasonable to conclude that the infriger had constructive knowledge. In other words, the infrigner cannot feign ignorance to avoid a finding of trademark infringement.
Use the registration symbol as soon as possible! But remember, you cannot use the registration symbol until you secure a trademark registration. Prior to securing a registration, you can use other symbols to notify others that you believe you have rights in your brand. However, those rights are likely far more limited than the rights obtained through a trademark registration. so, register your trademark and use the proper symbols to maximize your rights!
The differences among (R), TM, and SM are related to the registration status of the trademark.
You may only use the trademark registration symbol “(R)” if you have an Official Trademark Registration Certificate. You can obtain an Official Trademark Registration Certificate from the USPTO. The (R) symbol serves to inform others of your trademark registration. However, you cannot use the (R) symbol if you do not have a registered trademark.
You can use the TM symbol for both unregistered and registered trademarks. The TM symbol conveys that you believe that you own rights in the trademark. Additionally, the TM symbol commonly symbolizes a trademark owners’ common law trademark rights in the mark.
The SM symbol stands for “service mark.” This symbol is nearly identical to that of the TM symbol, with one exception. This symbol is used in association with services, rather than products or goods.
It is important to understand the differences among (R), TM, and SM. If you are using the wrong symbol, you may be forfeiting certain rights or violating the law.
For example, in a trademark infringement case, a trademark owner can recover lost profits and damages if the trademark owner can establish that the infringer had knowledge of the trademark registration prior to the infringement. Proving actual knowledge can be extremely difficult. However, the trademark owner can establish constructive knowledge if the registration symbol was displayed in connection with the trademark. In other words, the infrigner cannot feign ignorance to avoid a finding of trademark infringement. Thus, you may unintentionally forfeit your ability to recover lost profits and damages if you do not use the registration symbol and can’t prove that the infringer knew of your trademark rights.
Policing your trademark is an important task for maintaining the strength of your trademark rights. There are passive and active approaches:
- Waiting until instances of confusion arise between your brand and that of a third party.
- Periodically searching the Internet and industry for potentially infringing brands.
If your trademark has real value, you’ll want to proactively monitor the U.S. Patent & Trademark Office trademark application filings to determine if anyone is seeking rights to a confusingly similar brand. It is difficult for even the most experienced trademark attorneys to do this manually because one must look not just for “identical” trademarks, but those with:
- phonetic similarity;
- orthographic similarity and misspellings;
- prefix, infix and suffix variations;
- vowel and consonant similarity;
- plurals and stemming;
- abbreviations and acronyms; and
- other similarities
Well-informed brand owners and intellectual property practitioners set up sophisticated trademark watch services for an annual fee. Every 1-2 weeks, the monitor queries trademark databases in the U.S., Europe and in other countries for newly filed applications that could infringe the trademark owner’s rights.
For a litigation-grade trademark registration we often start with a knockout search. If the mark is a reasonable candidate for registration, budget approximately $955-$1,600. The process takes about a year and once granted, budget around $100 per year to keep a federal trademark in-force with renewals. No attorney can ethically guarantee a trademark will grant. The examination process at the U.S. Patent & Trademark Office (USPTO) is adversarial and even when approved by the trademark examining attorney, every mark must be published for opposition for one month wherein private parties can oppose the registration of a trademark.
While it is possible to trademark a last name/surname, you cannot secure a federal registration on the principle register for a trademark that is primarily merely a surname. You can secure a trademark registration for a surname that has acquired distinctiveness or a surname that is not primarily merely a surname. In addition, you can register a trademark that is primarily merely a surname on the supplemental register.
A trademark office action is a formal communication from the U.S. Patent and Trademark Office. The office action identifies the legal status of your trademark application. The office action will also identify any issues with your application and designate the period in which you must reply to office action to prevent your application from going abandoned.
You may require assistance from an experienced trademark attorney to overcome the issues identified in the office action. In the last 20 years, Smith & Hopen has helped trademark owners overcome every possible reason for refusal. Contact us today for a free consultation.
The difference between a service mark and a trademark is a matter of semantics. A service mark is a trademark. However, the term “service mark” is used to refer to trademarks for services. The term “trademark” is often used in a broader sense to describe marks used in connection with goods and/or services.
Regardless of whether you are offering goods or services in connection with your trademark, the experienced attorneys of Smith & Hopen can advise you on all things trademark. Contact us for additional information or a free consultation.
A trademark is any distinctive words, designs, logos, and slogans used to identify the origin of a good or service. In some cases, even a particular color, sound, and scent can be trademarked if a certain degree of consumer recognition has been achieved. A trademark is sometimes referred to as a “brand name.”
A trademark can be registered with the U.S. Patent and Trademark Office to secure nationwide trademark rights. These nationwide trademark rights prevent others from offering for sale similar goods or services under a similar trademark. Trademark rights, however, will not prevent others from offering for sale similar good or services under a clearly dissimilar trademark. You should consult an experienced trademark attorney to determine if your trademark is available for registration with the U.S. Patent and Trademark Office.
You can trademark your first name. The main purpose of a trademark is to identify a source of goods and/or services. Should you choose, you can use your first name to identify the source of your goods or services.
However, your trademark application could still be denied if it is confusingly similar to a preexisting trademark application or registration. You should consult with a trademark attorney to determine whether your name is available for trademark registration.
Yes, you can trademark a color, but it is challenging and you must prove it has acquired secondary meaning. It cannot be “functional” with respect to the product (e.g., bright orange traffic cones). Some examples include brown for UPS trucks, pink fiberglass for Owens Corning insulation and orange scissor handles.