Federal Trademark Registration: What is it, can I get it, and do I need it?

When it comes to the topic of trademark registration, many clients often face the same question: whether they should federally register their trademarks or not? This question is fairly common regardless of whether clients have been using their marks for a while or just thinking of using a new mark for the first time.

In typical lawyer fashion, the answer to that question is: it depends. It should be noted upfront that unregistered marks are generally entitled to some protection at common law. Yet, while you’re not required to register your trademarks, federal registration does provide trademark owners with many advantages.

In this article, we’ll briefly discuss federal trademark registration, the requirements for federal protection, and the benefits of federal registration.

To register or not to register?

(1) Federal Registration

Federal trademark registration is to the process of applying for legal protection of a trademark. In the United States, such applications are submitted to the United States Patent & Trademark Office (the “USPTO”). While not all marks are eligible for federal protection, if your mark qualifies, it'll be recorded on the USPTO's register and you will be provided with a trademark registration certificate.

(2) Requirements for Federal Protection

Generally, to qualify federal trademark protection, applicants must demonstrate that their marks are used interstate commerce and distinct. The interstate commerce criterion basically requires that a mark be used across state lines in connection with some sort of commercial activity. As part of your trademark application, you’ll be required to establish such use –– though what constitutes use can depend on whether you’re using your mark in connection with goods or services.

The second criterion that a mark be distinctive requires the applied-for mark be capable of identifying and distinguishing particular goods or services from another’s goods or services. The USPTO typically bars applicants from registering marks that are too similar to registered marks, citing likelihood of confusion as grounds for refusal. To avoid applications from being refused on these grounds, the USPTO instructs applicants to conduct clearance searches prior to submitting their applications. [1]

(3) Benefits of Registration

Although federal registration is not required, owners of registered trademarks enjoy significant advantages over those of unregistered marks, such as:

• Exclusive Rights. Federal registration gives you the exclusive right to use your mark in connection with the goods and/or services for which it's registered. What’s more is that such exclusive rights are national in scope, meaning that once registered, your trademark is enforceable throughout the entire United States.

• Federal Courts. Upon registration, you’ll have the right to access, and bring trademark lawsuits, in federal courts and may be entitled to claim certain statutory damages, such as enhanced monetary damages and attorneys' fees.

• Legal Presumption. By having a federal registration, your trademark is presumed to be valid. While this may not sound like much, this legal presumption is actually very helpful. For instance, in court as a primary matter you'll typically be required to prove that your mark is valid. As a federal trademark owner, you can easily establish validity by simply presenting a copy of your registration, thereby eliminating the need for excessive amounts of evidence. What's more is that after five years, your trademark becomes eligible for incontestability status, meaning that the legal presumption is incontestable and your mark's validity is conclusively presumed subject to certain defenses.

• TESS Database. The USPTO includes registered and pending trademarks in its free trademark database, the Trademark Electronic Search System (TESS). Inclusion in TESS makes it much more likely that your trademark will show up in federal clearance searches. This may serve important deterrence and prevention functions. For example, because TESS makes your mark easy to find, other parties conducting searches may be deterred from applying for similar trademarks. Moreover, because the USPTO will also be able to easily find your mark, it can prevent similar trademark applications from registering.

• Use of ®. The ® symbol means that a trademark is federally registered. Once your trademark is registered, you may use the ® symbol as a way to inform others of your registration. Your use of the ® could deter others from using your mark or a similar mark.

• Online Enforcement. With so much infringement happening over the Internet these days, having a federal registration can be particularly useful when it comes to enforcing your trademark rights online. For instance, Many websites, including social media and e-commerce platforms, will generally not remove infringing content without proof of federal registration. Moreover, certain websites provide federal trademark owners with enhanced search capabilities to detect and stop infringing activity on their respective sites, such as Amazon's Amazon Brand Registry program.

• Customs Enforcement. Federal registration entitles you to record your trademark registration with the U.S. Customs and Border Protection (“CBP”). The CBP will then stop the importation of infringing and/or counterfeit goods into the U.S. by monitoring and seizing any such goods.

• Foreign Registration. You can use your U.S. trademark registration to obtain trademark protection in many foreign countries. This may be especially useful if you’re looking to expand into international markets.

• Value. You can build the value of your trademark by investing in the goodwill and reputation of your products or brand. While your mark need not be registered to do so, be aware that compared to unregistered marks, registered trademarks tend to be more valuable to business owners, creditors, and investors. For example, a registered mark can be pledged as collateral to secure a loan. Moreover, investors may be more likely to fund your company and potential buyers may be more likely to find your company attractive if your find your IP is protected.

 Footnotes:

[1]  See e.g., https://www.uspto.gov/trademarks/search.

NOTICE. This blog is made available to you by Celeblaws, P.A. for general information purposes only. It is not intended to provide legal advice, nor should you rely on any information herein as it is subject to change without notice and may not be current. By using this blog, you understand that no attorney-client relationship exists between you and Celeblaws, P.A. or any individual contributor. You should consult a licensed attorney for personal advice regarding your own unique situation.