Is your business or product name protected against others who intentionally or unintentionally use the same name? Could someone register a website using that name and get away with it? Registering your trademark has many advantages. Find out how you can benefit from registering yours.
Bruce Springsteen may be known as “The Boss,” but he is not The Boss when it comes to controlling his trademark as a domain name. The famous rock ‘n’ roll singer lost his www.brucespringsteen.com domain name arbitration dispute to a notorious cyber squatter partly because he had never registered his name as a trademark with the United States Patent and Trademark Office (USPTO).
If it can happen to Springsteen, it can happen to you. Here are seven reasons to become and remain The Boss of your trademarks by filing for federal trademark registration.
In today’s Internet economy, trademarks are a valuable asset for companies of any size, and federally registering your trademarks with the 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. Using the registered trademark symbol (®) serves as a public notice to competitors that the mark is protected, which helps deter potential infringements and allows the owner to seek enhanced remedies in case of violations.
By registering your trademarks federally, you preserve the right to expand your business into geographic regions of the country where you haven’t previously conducted business. If you don’t have a federal registration and you’ve only used your trademark in, for example, California and Nevada, another person who later files an application for registration of the same trademark — even after you had started use thereof — can prevent your use of the trademark in any other states other than California and Nevada. Consulting a trademark attorney can provide valuable guidance and increase the likelihood of a successful trademark application.
Federal registration of a trademark offers several significant advantages over common law rights. While common law rights are based on the use of the trademark in commerce within a particular geographic area, they don’t provide the same level of protection as federal registration. With federal registration, you gain nationwide protection, the right to file suit in federal court for alleged trademark infringement, and the ability to bar others from registering the same mark in a similar commercial field. This nationwide protection is crucial for businesses looking to expand beyond their local markets.
Federal registration also provides a presumption of ownership, which can be incredibly useful in disputes over trademark rights. This presumption can save you time and money in legal battles, as it shifts the burden of proof to the other party. Moreover, federal registration enhances your brand’s credibility and legitimacy, making it easier to attract customers and investors.
In addition to these benefits, federal registration allows you to use the federal trademark registration symbol (®), which serves as a public notice of your trademark rights. This symbol can deter potential infringers and signal to the marketplace that your brand is protected. Overall, federal registration is an important step in safeguarding your brand identity and ensuring that you have the exclusive right to use your trademark in commerce.
If a cyber squatter is infringing on your trademark by registering it as a domain name, trademark protection through federal registration is helpful in combating such issues. 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. In a matter handled by our office, because our client held federal trademark registrations, we were able to force a cyber squatter to relinquish an infringing domain name without incurring litigation expenses. While there are trademark registration fees associated with the process, the long-term benefits of securing your brand far outweigh these initial costs.
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 who are more familiar with trademark matters than those in the state courts. The USPTO’s Trademark Center, which recently replaced the trademark electronic application system (TEAS), facilitates the registration process by allowing applications to be filed online with the USPTO, making it efficient and cost-effective. The trademark registration process involves several steps, including conducting a trademark search, filing an application, and managing associated fees.
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 attorneys’ fees if someone infringes on your trademark.
Registered trademarks can be recorded with U.S. Customs and Border Protection to prevent the importation of infringing foreign goods, safeguarding your brand from counterfeit products.
After five years of continuous use and registration on the Principal Register, your trademark may achieve incontestable status, limiting challenges to its validity and reducing potential litigation expenses.
In another case handled by our office in which we represented the owner of an unregistered trademark that had been in use for over five years, the client was forced to expend litigation resources defending attacks on the validity of its trademark, which would have been foreclosed by the five-year registration.
The nominal costs involved in federally registering your trademarks are clearly outweighed by the significant financial and legal advantages afforded to you.
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Copyright Milord Keshishian. Mr. Keshishian is an attorney focusing exclusively on intellectual property law and has extensive experience in all aspects of trademark, patent, copyright, trade secret, unfair competition, and domain name law. You can visit his website at www.milordlaw.com.
Disclaimer: The content on this page is for information purposes only and does not constitute legal, tax, or accounting advice. If you have specific questions about any of these topics, seek the counsel of a licensed professional.
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