October 12, 2016
Originally posted 2018-11-19 11:21:36
By Aurelia Mitchell Durant, Esquire | amdlawgroup.com
Trademark protection has many benefits for business owners. Although it is technically true that you acquire some trademark protection in the United States simply by using the mark it is best to register the trademark. By registering your trademark on the Principal Register you are enhancing the rights you already acquired when you started using the trademark. Here are some of the significant benefits:
Without registration, your trademark is only protected in the territory that you actually use it so your trademark could be used by someone else in an area you don’t currently trade in, and more, they can prevent you from using it in their territory. The internet erases the territorial lines and makes all business global.
Deter others from using your trademark
A very important benefit of registration is that you let everybody know that you are using a mark as a trademark. Registering your trademark goes beyond just using the mark and would operate as some form of deterrence.
If you have continuously used your registered trademark for at least five years you may be able to apply for incontestable status which, if granted, can prevent many of the more difficult and expensive legal challenges to your trademark. For example, if your mark is deemed “incontestible” it is more difficult for another to argue that your trademark is “confusingly similar” to another or that it lacks “secondary meaning”.
The right to sue in federal court
With a federal registration, the owner of a trademark has an automatic right to sue in federal court without needing to prove jurisdiction which can save a lot of time and additional expense.
Up to triple damages for infringement
In the case of wilful trademark infringement against you, it is possible to receive up to triple the amount of damages plus your attorney’s fees if your trademark is registered federally as opposed to not being registered.
Right to use the ® symbol
You can only use this symbol with a trademark that has federal registration. Using the symbol provides what is known as “constructive notice” and means anybody you sue for trademark infringement cannot ostensibly claim the defense of “innocent infringement” which as a successful defense can result in no damages being awarded.
There are several other benefits which should encourage all business owners to protect their trademarks including the ability to enlist help from United States Customs against importers of counterfeit items using your trademark; protection against so-called cybersquatters registering your trademark as a domain, and advantages to international trademark registration if your business expands to work internationally.
An example of a trademark would be the “swoosh” logo that is identified with Nike. The swoosh, “Just do it,” and the name itself, “Nike,” are all trademarked phrases or images that belong to the Nike Corporation. When we see the swoosh logo, hear “Just do it,” or see the word “Nike,” we immediately are reminded of the style of their shoes, their comfort, and the lifestyle. Because these images and phrases inspire brand awareness and loyalty, they are very coveted. To ensure that Nike is the only organization that can make use of and profit from their logos and slogans, they have them trademarked. Trademarks are words, phrases, symbols or designs that identify and distinguish the source of the goods of one party from those of others.