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.
You should use the trademark registration symbol if you have a registered trademark. You are not required to use the registration symbol, but there is a major upside to doing so.
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.