Create Time 2018-03-07 03:03 Views：18553
Trademarks are very important intellectual property assets that affect millions of individuals on a daily basis. The decision to purchase an item or to hire a company to provide a particular service is usually centered around the reputation and goodwill that is associated with a mark. Many consumers are loyal to a particular brand and are especially focused on purchasing goods and/or services from specific sources in order to ensure quality, consistency, good customer service, and peace of mind. For these reasons, it is important to be aware of how to protect one’s valuable trademark.
Trademarks are protectable under many different statutes, legal causes of actions, and regulations in the United States. Initially, it is possible to protect a trademark using federal law and the United States Patent and Trademark Office (USPTO), which would presumptively cover all fifty states and territories. Further, on a statewide level, each state in the U.S. has avenues for trademarks to be registered and protectable within the borders of each state.
Additionally, there can be what are known as “common law” rights in one’s trademarks. The cornerstone of trademark law and rights associated with a trademark is that, theoretically speaking and without any analysis of other prior uses of the mark that may give rise to infringement, once an individual or other entity begins using a trademark with any type of goods or services, the trademark holder is accruing trademark rights and growing the brand recognition of their mark, even if only in a particular town, city, or state. Therefore, using your trademark, in commerce, with specific goods and services, establishes legal rights in the mark, known as "common-law" rights.
So, why should a trademark holder be concerned with registering their trademark on a national, i.e. federal level? Well, there are numerous advantages and benefits provided by federal registration that are not necessarily provided with state law and common law as illustrated below.
1. Use of the coveted ® registration symbol
First, only a registered trademark is eligible to use the highly desired ® symbol. The ® symbol is also referred to as the federal registration symbol and provides notice that your mark is federally registered and protected on a federal level. If you do not have a registration certificate issued by the United States Patent and Trademark Office (“USPTO”), then you should not be using the ® symbol in association with your mark. The following shows an exemplary illustration of use of the ® symbol.
Example: TRADEMARK ®
For non-federally registered trademarks to use the TM symbol or SM symbol next to their trademarks. The “SM” symbol may be used to indicate a “service mark” or a mark that is associated with services, which are any type of activity that the consuming public would hire a particular company or individual to perform. Alternatively, many people use the TM symbol to refer to any type of trademark whether it is applied to goods or services or both.
Example: TRADEMARKTM or TRADEMARKSM
Each time the mark is used, whether it is federally registered or not, it is helpful to designate the trademark with either a ® symbol (note: only registered trademarks having an actual registration certificate may use this mark) or a TM or SM symbol (for all other cases). This way the public is aware that the owner of the product or services considers that particular mark to be a source identifier and is put on notice. To recap, some important points for when you may use the ® symbol:
· The ® symbol should be used only on or in connection with the goods or services that are listed in the federal registration.
· The ® symbol may not be used with marks that are not actually registered in the USPTO.
· Even if an application is pending, the ® symbol may not be used until the mark is officially registered. It is not sufficient to have the mark published or receive a notice of allowance as circumstances may change during the pending examination before the official registration certificate is issued by the USPTO.
· Registration in a state of the United States does not entitle a person to use the ®.
· A party may use terms such as “trademark,” “trademark applied for,” “TM” and “SM” regardless of whether a mark is registered. These are not official or statutory symbols of federal registration.
· Intentional misuse of the ® symbol in an attempt to deceive the public about the federal status of a mark may be grounds for denying or canceling an otherwise registerable mark, and may give rise to allegations of fraud.
2. Legal presumptions of Exclusive Use, Ownership, and Eligibility as a Trademark
Having a federally registered trademark enhances your rights in so many ways, not the least of which, are the several legal presumptions that are automatically associated with your federally registered mark. A “presumption” means an idea or concept that is assumed to be true. In legal proceedings, oftentimes, it is necessary to determine who has the burden to proof certain facts or conditions are true, and if there is a presumption in place, in cases of trademark law, the party who is not the registered trademark holder has the burden of proving that these legal presumptions are untrue.
The official legal presumptions for trademarks successfully registered on the Principal Register of the USPTO are 1) legal presumption of the exclusive right to use the mark in association with the registered goods and services in all 50 states in the U.S. and its territories 2) legal presumption that you are the owner of the trademark and 3) legal presumption that the trademark is valid and eligible as a trademark.
These legal presumptions are a result of a trademark holder applying for and undergoing examination by an assigned trademark examiner. Such examination involves careful and thoughtful examination of one’s trademark and specimens, which are scrutinized and subjected to comparison with other federally registered trademarks. With a federal trademark registration, it is not necessary for a trademark holder to apply in each individual state in the U.S.
Having a federal registration with such legal presumptions connected which definitely make your trademark much more desirable from a licensing standpoint and purchasing standpoint. Future licensees and assignees are going to be more interested in working with and acquiring trademark rights from an individual or company who has a federally registered trademark as it will cover all 50 states in the U.S. and afford them all of these legal presumptions.
Further, having these legal presumptions can greatly assist a trademark holder to prevent unauthorized use of their trademark, which is why having a federal registration can greatly enhance one’s trademark rights both in and out of court. Of course, it is critical that if a case of unauthorized use does arise, that a trademark owner consult with an attorney to understand their legal rights and any possible issues that may arise. There have been cases occasionally where federal registrations are invalidated for various reasons, such as the trademark holder is held to have abandoned the mark where the trademark owner does not maintain consistent use, the mark become generic, a prior trademark holder in a region or state has prior rights of use, and other various reasons. Nevertheless, the fact that a trademark is federally registered and that these legal presumptions are attached to federal registration on the Principal Register are tremendous advantages provided by a federal registration.
3. General Notice to the Public
An additional tremendous benefit of being registered on the federal level in the U.S. is that it puts the public on notice that you are the owner of the mark. If there is a question as to who owns the mark, it can be looked up in the USPTO's online database. Being listed in the USPTO's database means that others considering potential marks can find your mark when they search the USPTO database to see if their mark is available. The existence of your mark in the database can help others to avoid selecting a mark that is too similar to yours.
4. Prevent registration of confusingly similar marks filed after your trademark application
In addition, the USPTO relies on the same database for its own search and will find your mark when examining someone else's application. The USPTO will cite your registration against a confusingly similar mark in a later-filed application, preventing a potentially conflicting trademark from registering. This is a great benefit and way to ensure the uniqueness of your mark in a particular industry because the USPTO is effectively limiting the chance of infringement of your trademark by preventing later filed trademark registrations if a newly filed mark is determined to be confusingly similar to your registered trademark.
5. Recordation of your trademark with U.S. Customs and Border Protection
A federal trademark registration gives you the ability to record your trademark with U.S. Customs and Border Protection. That agency will use your trademark registration to help prevent importation of infringing or counterfeit foreign goods. In several instances, the U.S. Customs and Border Patrol has inspected and seized goods that are counterfeit and infringing on recorded federally registered trademarks.
The following link directs you to the U.S. Customs and Border Protection website with more information regarding how to record your trademark: https://www.cbp.gov/trade/priority-issues/ipr/protection
6. Registration with Amazon for the Amazon Brand Registry
Amazon has become one of the largest internet retailers in the world. With that, there is often the possibility that third parties may innocently or not so innocently infringe upon the trademark rights of others. Having a registration of your trademark on the Principal Register will allow you to register your trademark with Amazon Brand Registry, which helps you to protect your registered trademarks on Amazon. (https://services.amazon.com/brand-registry.html).
According to the Amazon site, your enrollment in the Amazon Brand Registry provides access to powerful tools including proprietary text and image search, predictive automation based on your reports of suspected intellectual property rights violations, and increased authority over product listings with your brand name. It is noted that if you have a trademark registration in eligible countries other than the U.S. (even if you are not on the Principal Register in the U.S) you may still register with Amazon Brand Registry.
7. Right to Bring Legal Action in Federal Court
With a federally registered mark, a trademark owner has the right to bring legal action concerning the registered mark in federal court. It is your legal responsibility to police your trademark and to protect it from infringement, and only you (or your attorney) may bring legal action against others infringing your mark. There are various factors that may make it more desirable to consider filing a legal action in federal court as opposed to state court.
8. Foreign Registration
A U.S. trademark registration may be used as a basis for applying for a trademark registration in many foreign countries. It's a great benefit when your business takes off and you become interested in registering your trademark on a global scale or in particular countries. In addition to the U.S. federal trademark filings, Witmart is able to assist you in filing your trademark application in various countries, including Canada, Australia, the European Union, and elsewhere.
Federal registration provides numerous advantages to a trademark owner than state law and common law alone and is a very powerful way of protecting one’s valuable trademarks. This is why the USPTO has registered millions of trademarks from both domestic and foreign applicants over the years.
For all these reasons, it is a worthwhile process to become better informed about the strength of any trademarks you may currently be using or intend to use in the future and to better understand their eligibility for trademark registration.
Disclaimer: This website is not intended to offer legal advice or to be a substitute for a consultation on a case by case basis with an attorney. The information provided above is meant for informational purposes only and may be subject to change.
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