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. Some examples include trademark control on Amazon’s Brand Registry, preferential status in domain name disputes and the presumptive owner status in dealing with infringing advertising through Google’s trademark infringement system.

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. We protect billions of dollars in assets and goodwill through the federal trademark system.

Registration Benefits

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.

National Rights

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.

US Map
Federal registration immediately grants companies rights throughout the United States upon filing.

Incontestability

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.

Superhero with Trademark Registration Symbol
After 5 years of registration, the trademark is eligible to be “bulletproof” as to most infringement defenses.

Enhanced Remedies

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.

Graph of stacked coins with arrow pointing upward.
Greater potential recovery for trademark infringement (3X damages), criminal penalties for counterfeiting and domain name advantages.

Validity

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.

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Courts, federal agencies, and ICANN will presume a registered trademark is valid and ownership is proper.

Constructive Notice

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.

Man looking at phone and notebook computer.
Trademark infringers cannot claim they were “unaware” of your federal registration.

Importation Protection

Federal trademarks can be used to stop infringers through the Department of U.S. Customs and the International Trademark Commission (ITC). 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.

Cargo ship at port. Federal trademark registrations can be used to protect against infringing imports.
Through the International Trade Commission (ITC) obtain orders for U.S. Customs to seize infringing imports.

Federal Courts

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.

Courtroom - an advantage of trademark registration is the option of bringing an action in either state or federal court.
Trademark registrants have access to federal court for enforcement (and the option of going through state court).

Trademark

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.

Category: Trademark

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Woman thinking about trademarking her first name

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.

If you need assistance, please contact us today to speak with one of our experienced trademark attorneys.

Category: Trademark

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