Advantages to Consider for Federal Trademark Registration

Before Trial

  • Constructive Notice - A federal trademark registration provides nationwide constructive notice of your rights. This prevents infringers from claiming innocent infringement or trying to register your trademark in other parts of the country.
  • Actual Notice – Some businesses conduct searches to find available names. Once you file your application for federal trademark protection, your trademark will begin appearing on these search reports. Appearing on these search reports reduces the likelihood a reputable competitor might accidentally use or try to register your mark.
  • Exclusivity - Unlike domain names, more than one company can own a single trademark. A federal trademark registration gives the exclusive right to use the trademark in association with particular goods or services. For example one company can use the trademark “lexis” for computer services, and another company can use the trademark “lexus” for cars. For a small additional fee, you can obtain federal registration in as many classes of goods or services in which you are using the trademark.
  • Protection for Descriptive Trademarks – Federal registration can turn what would otherwise be an unprotectable “descriptive” trademark into a fully protectable trademark. The Trademark Office will initially require descriptive trademarks be registered on the Supplemental Register. After five years of continued use of the trademark, you may then submit a declaration of the continued use and other evidence the trademark has obtained a “secondary meaning” in the marketplace. The Trademark Office will then move the registration from the Supplemental Register to the Principal Register, granting the formally descriptive trademark full federal protection.
  • United States Priority – A federal trademark registration often gives priority in all states – an advantage if others might try to use the same mark. Without a federal trademark registration, so called “common law” trademark rights extend as far as your mark is actually used. For example, if you are not using the trademark in Arizona, someone else can obtain common law rights to the trademark in that Arizona. If you invest a lot of money promoting a trademark, somebody might try to reap the benefits of your investment in a distant state. That can be a problem if you later decided to do business in that state.
  • Use of the Registered Trademark Symbol ® - Only registered federal trademarks may use the ® registered trademark symbol. This symbol puts other on notice of your rights. Use of the symbol can scare infringers and competitors from adopting the trademark.
  • Stop Cybersquatters – Many domain name registrars and the Internet Corporation for Assigned Names and Numbers have domain name dispute resolution procedures which favor federal trademark registrants. Having a federal trademark registration can help with domain name disputes.

At Trial

  • Access to Federal Court – Without a federal trademark registration, if your trademark infringer is located in another state, you may have to sue the infringer in their home state. In the alternative, you may have to prove damages sufficient to be able to file a lawsuit in your own state [diversity jurisdiction]. Even if some of your claims are based on state law, if you file in federal court based upon your federal trademark, you can have your state law claims heard in federal court.
  • Presumption of Validity – Without a federal trademark registration, to succeed against an infringer at trial, you will have to prove that your trademark has been validly acquired and has not been abandoned. A federal trademark registration serves as evidence that the trademark is valid. The infringer may try to overcome this presumption but federal registration places much of this burden on your opponent.
  • Presumption of Ownership - You must to prove you own the trademark. Proof of ownership can be costly and time consuming. A federal trademark registration serves as evidence of your ownership of the trademark.
  • Presumption of Exclusive Rights in Trademark – You must also prove that you have exclusive rights to the trademark. It is easier to prove your exclusive right to the trademark with a federal trademark registration. A federal trademark registration serves as evidence of your exclusive rights in the trademark.
  • Presumed Not Abandoned – You must prove that the trademark has not become abandoned. It is easier to prove continuous use sufficient to prove non-abandonment of the trademark with a federal trademark registration. A federal trademark registration serves as evidence the trademark has been in continuous use and has not become abandoned.
  • Incontestable – Within one year following a 5-year period of continuous use of the mark in commerce, a federal trademark registrant may file a Section 15 Declaration. Once accepted, the trademark is “incontestable,” meaning the federal registration is even stronger evidence. Your opponent may then only attack the registration on very limited grounds.

After Trial

In addition to providing for an injunction to stop the infringer from further use of the registered trademark, the federal trademark law (Lanham Act) provides for the recovery of damages, including possibly:

  • Defendant’s profits from using the mark
  • Plaintiff’s actual damages and losses
  • Plaintiff’s lost profits

Additionally, if the infringer is found to have acted knowingly and willfully, the Lanham Act allows the trial judge to award the following additional damages:

  • Up to three times the actual damages shown above; and
  • An increase of the award of profits if the court determines the award is inadequate.

While the Lanham Act does not specifically provide for punitive damages, punitive damages may be recovered under the state law torts of trademark infringement and/or unfair competition.

Under the United States legal system you are rarely able to recover your attorney fees. Competitors are often willing to risk infringements, knowing you won’t spend attorney fees to recoup a relatively small amount in damages. The specific provision in the Lanham Act for the recovery of attorney fees makes federal trademark registration a very powerful tool. Federal trademark registration provides benefits to registrants against infringers. Few willful infringers fight in the face of a federal trademark registration. Most recognize the danger and avoid infringing a federally registered trademark altogether. Probably the greatest benefits of federal trademark registration are the lawsuits you never had to fight.