If trademark rights in the United States of America (“USA”) are based on your use of a trademark rather than your registration of a trademark (see “Use It or Lose It”), then what is the benefit of a federal registration of a trademark with the United States Patent and Trademark Office (“USPTO”)? Here are ten reasons why you may want to register a trademark with the USPTO:
First, registering a trademark with the USPTO strengthens the legal rights acquired by the use of your trademark. In a trademark dispute, courts and juries can be told that you have rights based upon your use of a mark, but a federal registration with the USPTO speaks more clearly and simply to a court and jury than multiple strands of evidence showing use.
Second, a registered trademark with the USPTO will give you a clear basis to apply for the enforcement of your trademark rights with online entities like Amazon, Google, YouTube, and the Internet Corporation for Assigned Names and Numbers (“ICANN”) through which domain names are obtained.
Third, by registering your trademark, you will provide notice of your use of the mark to others who may have an interest in using the same, or a similar, mark for the same, or similar, goods and/or services.
Fourth, a registration of a trademark functions as evidence of: the validity of the trademark, the ownership of the trademark, and the exclusive right to use the trademark in commerce for the goods and/or services identified in the registration.
Fifth, after five years of continuous use of a registered trademark in commerce, and upon filing an affidavit of incontestability with the USPTO, the trademark will be protected from third-party challenges, even based upon priority of use, unless there has been an obvious fraud in your application for the mark.
Sixth, a registration provides constructive (or implied) notice to others in the USA of your claim of ownership of the trademark for the goods and services associated with that mark.
Seventh, a registration gives the owner of the mark the right to bring suit in federal court even if both the plaintiff and defendant are from the same state (otherwise known as a lack of diversity jurisdiction).
Eighth, a registration gives the owner of the mark the right to statutory damages, including triple damages and criminal penalties in counterfeit cases.
Ninth, a registration recorded with U.S. Customs Office gives the owner of the mark the right to stop the importation of infringing goods into the USA.
Tenth, a federal registration gives a trademark owner priority rights for foreign applications under the Paris Convention.
Therefore, even though legal rights to a trademark in the USA arise out of the owner’s use of that mark in commerce, there are significant, additional, bolstering reasons to register a trademark with the USPTO.