FEDERAL & STATE TRADEMARK REGISRATION

A federal registration typically provides legal rights to the mark throughout the United States. The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, registration is not required. The owner of a common law trademark may also file suit, but an unregistered mark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.

 

TOP REASONS TO REGISTER A MARK

(1) Valuable Asset. In today's Internet economy, trademarks are a valuable asset for companies of any size and federally registering your trademarks with the United States Patent and Trademark Office ("USPTO") grants you valuable national rights to the trademarks. Coca-Cola is consistently ranked as one of the world's most valuable trademarks with annual revenue generating capacity in the billions of dollars.

 

(2) Nationwide Priority. By registering your trademarks federally, you preserve the right to expand your business into geographic regions of the country where you have not previously conducted business. If you do not have a federal registration and you have only used your trademark in, for example, Ohio and Virginia, another person that later files an application for registration of a similar mark -- even after you had started use thereof -- may be able to prevent your use of the trademark in any other states other than Ohio and Virginia.

 

(3) Tool Against Cyber Squatters. If a cyber-squatter is infringing on your trademark by registering it as a domain name, federal registration of your trademark is one of the elements considered in legal proceedings to determine the rightful owner of the domain name. In addition, federal registration allows a hold to be placed on the domain name until the ownership dispute is determined through arbitration or by a court, thus preventing the erosion of the goodwill and value in your trademarks.

 

(4) Advantages in Court. Having a federally registered trademark provides the advantage of a legal presumption that you are the owner of the trademark, that the trademark is valid, and that you have the exclusive right to use the trademark nationally. The federal registration certificate provides a "stamp of approval" in the mind of a judge or jury that you are the rightful owner of the trademark. Furthermore, a federal registration provides the right to sue in federal court assuring oversight by judges that are more familiar with trademark matters than those in the state courts.

 

(5) Enhanced Remedies for Infringement. A federal registration provides notice and acts as a deterrent to potential infringers that you are the exclusive owner of the trademark. A federal registration allows for tripling of the actual damages suffered by the owner, plus attorney's fees if someone infringes on your trademark.

 

(6) Prevent Importation. A registered trademark may be filed with U.S. Customs Service to prevent importation and allows for seizure of infringing foreign goods.

 

(7) Incontestable Trademark. After five years of continuous use and registration on the principal register, certain grounds for cancellation of a registered trademark are foreclosed, thereby saving you tremendous litigation expenses.