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.

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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

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.

An image of Samson Rope Technologies 135 plus year old trademark.
Samson Rope Technologies’ trademark

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.

Category: Trademark

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