What are the Benefits of Federal Trademark Registration?
There are many good reasons for federally registering your trademark. The benefits of having a trademark registered on the Principal Register include:
1. A presumption of ownership in the trademark. This is very important when you have to walk into a court to assert your trademark. It is also very helpful when you send a cease-and-desist letter to anyone who has started using your trademark (or a trademark that creates a likelihood of confusion with yours).
2. A federal trademark registration will be located in a trademark search by a competitor while they are in the early stages of choosing their own trademark. Therefore, your federal registration will ward off would-be infringers before they even get comfortable using an infringing trademark. It’s significantly easier to get an infringer to choose a new mark when they have little money invested in the infringing trademark.
3. It allows you to place “®” next to your trademark, which helps ward off infringers by letting them know you are serious about protecting your trademark. This also puts them on notice that you have a federal registration, which can help with recovering damages in court.
4. A federal registration covers the entire nation. If you rely only on your common law rights, then you will only be able to assert your trademark in the geographic areas where you conduct business using the trademark.
5. A federal registration allows you to seek statutory damages in court against counterfeiters. This means you don’t have to prove how much their activity hurt you financially.
6. A federal trademark application grants you a priority date for obtaining foreign trademark registrations.
7. A federal registration makes it much easier for you to roll out your trademark on a national scale. If you rely only on common law rights, it is possible that someone could start using the same or similar trademark in an area of the country where you have not started conducting business. If this happens, you will probably not be able to stop them by the time you expand to that area. Even worse, you might not be able to use your own trademark in that area.
8. A federal registration allows you to sue for infringement in federal court.
9. Once you have used your trademark continuously and exclusively for 5 years after obtaining your federal registration, you can file a Section 15 Affidavit to make your registration “incontestable.” Not only does this sound impressive, but it makes it harder for an infringer to challenge your trademark in court. This is extremely valuable if your trademark might be vulnerable to an argument that it is merely descriptive (and lacking distinctiveness).
10. Filing a federal trademark application for a trademark that you are not yet using secures you a “constructive use” date. This essentially gives you credit for having started using the trademark as of the application’s filing date, rather than the date you actually later start using it.
11. A federal registration allows you to record your trademark registration with U.S. Customs and Border Protection. This can be invaluable for seizing counterfeit goods as they arrive at Customs.
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