Trademark registration give trademark owners more benefits in addition to their common law trademark rights such as national protection, placing competitors on notice, presumptions of validity and ownership and more.
Common law trademark rights are acquired by use of a trademark, so why bother applying for a trademark registration? Trademark registration on the United States Patent and Trademark Office (USPTO) Principal Register give trademark owners additional rights and benefits not afforded to common law trademark owners. Below is a list of some of the main benefits and reasons for applying for a USPTO trademark registration.
Granite Trademark Services founder, Joseph Piper, Esq., discussing the benefits of a trademark registration
1. Trademarks are a Valuable Asset
For many companies, their most valuable asset is their brand and how quickly consumers identify it. For example, many people cannot tell the difference between Coke or Pepsi cola. However, there are many people who refuse to drink Pepsi or Coke because they are brand loyal.
Due to how loyal consumers are to certain brands, it is important to protect the consumer-brand relationship. The best way to do this is by applying for and receiving a federal trademark registration. Brand equity is one of the only things that can last forever and continue to become more valuable over time. It is important to to protect the brand via a trademark registration before it is too late.
2. Nationwide Trademark Rights
Common law trademark owners are only given the right to enforce their trademark within the geographic region they use their trademark. For example, a restaurant that has a location in Maryland and New Jersey will only acquire rights to the name of their restaurant in those regions. If they want to prevent a restaurant in California from adopting and using their same name, they would be out of luck.
When a trademark is registered with the USPTO, the owner is given trademark protection throughout the United States. This allows companies to claim and enforce trademark rights in their own market and in markets they have not used their trademark in yet. In the example above, the owner of restaurants in New Jersey and Maryland could stop the California restaurant from using the same or a confusingly similar name.
Obtaining national trademark rights is extremely important. First, national trademark rights ensure a company can expand into new states, regions and markets without being held back due to subsequent adopters of the trademark using the mark in that region. Second, a company will have more bargaining power when licensing their trademark for products or moving to a franchisor/franchisee business model. If a company does not have a federal trademark registration, other companies will not feel as compelled to enter into trademark license or franchise agreements.
3. Plant Your Flag
It is important to conduct a trademark search at the USPTO before adopting a new name or trademark for a product. Because every responsible business engages in trademark searching through the Trademark Electronic Search System (TESS), it is beneficial to be listed on TESS so all competitors are put on notice not to adopt the same or a confusingly similar mark. TESS is an online database of all the USPTO active and dead registered trademarks and trademark applications.
Trademark lawyers always go to TESS first when advising clients on whether a trademark is available for use or not. Therefore, by simply being on the USPTO trademark register, trademark lawyers will easily find a trademark registration that could be an issue for their client. When a trademark attorney steers a client away from the name based on a registered trademark, the owner of the registered trademark avoided the need for any potential trademark litigation.
4. Presumption of Validity
The first thing a trademark owner must establish when they sue someone for trademark infringement is that their trademark is valid. To prove a common law trademark is valid, and to allow the court to know the scope of protection it should be afforded, the owner must submit evidence of how long it was used, that it is distinctive, and that no one else uses the trademark.
With a trademark registration, a trademark owner can prove their trademark is valid, distinctive and only used by the owner by submitting their trademark registration into evidence. To rebut the trademark’s validity, the burden is automatically on the opposing party to prove it is not valid.
In the costly world of litigation, easily establishing facts and shifting the burden to the other side saves money and is an advantage.
5. Presumption of Ownership
When a trademark is registered, the USPTO and courts will presume that the listed owner of the trademark actually owns the trademark and has exclusively and continually used the mark since the first use dates. A common defense in trademark infringement cases is to claim the owner does not actually own the mark or does not exclusively own the mark. By shifting the burden to the other side to prove this, it makes it harder and more costly for an opponent to show the listed owner of a USPTO registration does not actually own the mark.
6. Anti-Counterfeiting Benefits
Counterfeiting is becoming more and more of a problem for trademark owners. In addition to losing out on sales, trademark owners brands will be tarnished if the products are subpar, which they most likely are. Owners of registered trademarks can go after counterfeiters more easily in federal court due to the presumption of ownership and validity, but their are also additional benefits.
The owner of a registered trademark can work with customs to stop any shipments of counterfeit goods bearing their trademark from entering the U.S. and diluting their brand. Trademark owners can teach customs agents how to identify whether their trademark is being used on genuine or counterfeit products. If customs accidentally stops an authentic shipment of goods, the trademark owner can clear up the issue with a phone call.
A trademark registration is a great way for companies to get the power and force of the federal government on their side to prevent counterfeiting.
7. Access to the Amazon Brand Registry and Other Online Benefits
A new area of the economy that is exploding is online sales on websites such as eBay, Amazon and others. Trademark owners have additional benefits on many of these websites. For example, owners of registered trademarks can join the Amazon Brand Registry, giving them additional control of their product listings.
The Amazon Brand Registry requires a registered trademark before sellers can be listed on it
In addition to more flexibility selling products on third party websites, trademark registrations make it easier to takedown unauthorized sellers on websites such as eBay who are using registered trademarks they do not own. Many counterfeit sellers pop-up on websites such as eBay, and a trademark registration is another tool in the toolbox to help prevent them from diluting and hurting brands.
Do you have any questions about reasons to file a trademark registration or if it is right for you at this time? Leave a comment below or contact us for a free trademark consultation.