9 Reasons To Apply For A Federal Trademark Registration
By Roland Tong
Applying for a federal trademark registration may not be mandatory, but after going through this list, you might wonder why it is not.
- Valuation. Federal trademark registrations are considered assets for your company, just like your account receivables, office furnishings, and equipment. When it is time for your company to apply for a loan or when it is time to sell your company, your federal trademark registrations will add to your company’s asset valuation.
- Deterrence. Federal trademark registrations are published and are searchable through the US Patent and Trademark’s website (www.uspto.gov). Federal trademark registrations serve as constructive notice of ownership. A US federal trademark registration notifies the world that you have exclusive rights to the mark in the United States.
- Ability to Use the Symbol. The federal registered trademark symbol ® can only be used if the trademark is in fact federally registered. Sanctions may be imposed for using the ® Symbol and falsely claiming federal registration. The registered trademark symbol ® provides marketing appeal and serves a deterrence function.
- Proof of Priority/ Presumption of Ownership. Federal trademark rights are conferred to the one with the earliest priority date. Priority can either be the date of first use of the mark or the date of filing of the federal trademark application, whichever is earlier. These dates are included in every federal trademark registration. If a dispute arises as to who has trademark rights over a mark, a federal trademark registration is clearly more credible evidence than other secondary forms of evidence. With a federal trademark registration comes presumption of ownership and exclusive rights to nationwide use of the mark.
- Priority in all States. Some states, such as California, confer common law trademark rights the moment the mark is used in commerce. However, the common law trademark rights conferred are limited within the state. If the mark has not been used out of state and another company uses a similar mark out of state, trademark rights over the mark cannot be enforced in that state. With a federal trademark registration, trademark rights are acquired in all states even if the mark has not been used in every state.
- Stop Subsequent Registrations. A federal trademark registration provides the owner with a basis for opposing the registration of subsequent conflicting marks or with a basis for seeking cancellation of subsequently registered marks.
- Bring a Claim in Federal Court. Disputes relating to a federal trademark registration are subject matter appropriate for federal court jurisdiction. Litigating in federal court may provide strategic advantages over litigating in state court.
- Advantage in International Trademark Filing. An owner of federal trademark registration may use a US registration as the basis to obtain registration in foreign countries.
- Prevent Importation of Counterfeits. With a federal trademark registration, the trademark owner can file a complaint with US customs to prevent importation of foreign infringing goods.