Many entrepreneurs and small businesses start their business by offering goods or services on the internet using a brand name. Online advertising and selling may create common-law trademark rights that provide some protection to the brand name. However, obtaining federal registration provides more rights and greater protection than common-law rights.
Start-ups and entrepreneurs generally take a close look at expenditures, and may view trademark registration as a discretionary expenditure. But, federal trademark registration is cost-effective; it provides a lot of bang for the buck.
Once a business becomes successful, competitors often offer goods or services using a brand name similar to the brand name of the successful business. If the business owner has not already obtained trademark registration, it may be more difficult to get a trademark at this point. Even if a mark can be registered, it may be more difficult to prevent others from using a similar name, if the competitor can show they have been using the similar name in commerce. At this point, most business owners wish they had applied to register their brand name when they began their business.
Benefits of Federal Trademark Registration
- Only federally registered trademarks can use ®.
- Common law trademark cannot use ®, but are permitted to use ™.
- Statutory presumption that the mark is valid.
- Once a trademark is issued, it is presumed valid. After 5 years of continuous use of a mark, the owner may apply to have the mark declared “incontestable”. This means that the mark cannot be challenged or cancelled.
- Presumption that the trademark applicant is the owner of the mark.
- Federal registration acts as a bar to the registration of another confusingly similar mark.
- The Trademark Office will not register a new mark that is confusingly similar to a mark that is already registered.
- In addition, after registration, a trademark appears in the U.S. Patent & Trademark database. Many businesses search this database before choosing a brand name. Having a registered mark in the database can deter other businesses from choosing a name similar to the registered mark.
- Federal registration may serve as the basis for an international trademark application.
- Registering a mark with the U.S. Patent & Trademark Office provides a basis to file in other countries, and obtain a mark in these countries. This can be important for businesses that sell products internationally, which happens more often in the age of the internet.
- Constructive notice nationwide of the trademark owner’s claim.
- The trademark owner does not have to provide actual notice of the registration. The fact that a mark is registered means that any business using a confusingly similar mark is deemed to have notice of the registered mark.
- Registration grants the right to file a trademark infringement lawsuit in federal court.
- A successful federal lawsuit for trademark infringement may allow the owner of the registered mark to obtain monetary remedies, including the infringer’s profits, damages, costs, and in some cases treble damages and attorneys’ fees.
- Registration may be recorded with U.S. Customs and Border Protection to prevent importation of infringing foreign goods.
- This can be an important benefit that prevents foreign competitors from selling goods in the U.S. without the need for a lawsuit. Once a mark is registered the owner may record the registration with U.S. Customs and Border Protection. Products bearing infringing trademarks may be seized before they enter the United States.
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