- Posted on: Nov 6 2018
As many already know, a proper trademark or service mark registration provides the holder with the exclusive right to use the mark in commerce as well as the right to bar others from doing so. Federal registration will also help to avoid infringing on the rights of others. In short, registering a mark will provide you with powerful legal protection, although there are several additional benefits. Let’s take a look at the top 15 reasons to register a trademark or service mark:
- More than a cool certificate to hang on the wall in your office, federal registration status makes it more effective to assert your rights against an alleged infringer rather than relying on, and proving, claimed common law use rights.
- The right to use the “®” symbol, which may discourage others from adopting a mark too similar to yours.
- The right to have your mark appear in the Trademark Register, making it more likely that a later-comer will discover your prior rights and refrain from adopting a too-similar mark.
- The right to have the Trademark Office cite your mark against later applicants seeking to register too-similar marks.
- Website operators typically require proof of registration before agreeing to take down or pursue a take action against a posting that infringes your trademark. In addition, trademark protection programs, such as the Amazon Brand Registry, require a federal registration before enrolling your trademark.
- Lenders to your business are likely to require a lien on your intellectual property as collateral; without registration of your mark, you may not be able to obtain financing or venture capital.
- Prospective business partners, licensees, franchisees, or purchasers of or investors in your business, are likely to expect if not require that your trademarks be federally registered.
- Registering your mark entitles you to record the mark with US Customs, which can better protect your mark against the importation of counterfeit goods.
- After five years of continuous use of a registered mark, the registrant’s right to use the mark in commerce for the goods or services identified in the registration may be made incontestable by filing an appropriate declaration or affidavit with the USPTO.
- The ability to assert constructive notice against an infringement defendant.
- The ability to pre-date conflicting foreign-filed applications by claiming your US filing date as your date of priority within the Convention time limit.
- The right to increased damages and increased likelihood of injunctive relief (and seizures) in civil litigation.
- Access to criminal remedies in cases of counterfeiting of a registered trademark—a crime that enforceable by federal and state authorities so that the registrant bears little of the cost of enforcement. Seizure of counterfeit goods is a frequent remedy. The registrant may also be entitled to compensation/restitution. Criminal counterfeiters face substantially greater penalties than do civil defendants, so registration is a deterrent to criminal infringement.
- The presumption of validity shifts the burden of proof to the defendant on issues such as distinctiveness, ownership, first use, and puts the registrant in the strongest position to enforce its mark in an infringement or dilution cause of action.
- Nationwide rights and recognition.
Whether you are looking to gain the competitive advantage of exclusivity in the marketplace or acquiring marks through a merger & acquisition or other transaction, proper federal registration is essential. Ultimately, the best way to protect your rights — and your brand — is by enlisting the services of first-rate intellectual property attorneys.