C3 Patent and Intellectual Property Law

Oct232009 | Steve O'Donnell

Benefits of a Registered Trademark

It’s often said that trademark rights come from the use of the trademark, and while that is true, there are strong incentives to registering your trademark.

If a trademark is registered there is constructive notice nationwide of the existence of the mark, meaning that if someone starts using the same or confusingly similar mark, they won’t be able to claim ignorance of the registration. It also gives the owner priority across the nation to use the mark, so even if the owner is only using the mark in one area of the country, the owner’s rights extend nationwide so the business can expand without concern that the mark is already in use somewhere else.

It’s evidence of ownership of the mark. Issues of ownership often come up when businesses come apart and a departing party claims ownership of a mark. Another area where this comes up is bands. The names “Pink Floyd” and “The Talking Heads” have been the subject of such problems when ownership of the name isn’t entirely clear.

The owner of a registered mark is able to bring an infringement action in federal court and may be awarded triple damages, profits, costs and attorney fees.

If a mark is registered in the US, that registration can be used as the basis for obtaining registration in other countries.

The registration may be filed with US Customs to prevent the importation of goods bearing an infringing mark.

A trademark is an intangible asset of the business’ balance sheet and can be sold, transferred, etc, like other property.

Once a trademark is registered, the ® symbol can be used to indicate to others that the mark is registered and that the owner will defend it.

Five years after registration the mark may be made incontestable, meaning that certainly aspects of the registration cannot be attacked by third parties. Generally, an incontestable trademark is immune to attacks that it is invalid or should not have been registered. Incontestability is not absolute, the mark can still be at risk if fraud was used to obtain it or if it has become a generic term.

One advantage that many don’t consider is that by registering a trademark you’ve essentially cleared it, meaning that the trademark office has looked at similar marks and determined that your mark is not deceptively close to someone else’s. It is still possible that a court might disagree, but obtaining registration is as certain as you can get that you won’t have any problems going forward with your business name or mark.

Ideally, you should speak with a trademark attorney when deciding on the name for your business so that he can check if there is already a business using that name. In reality, that doesn’t usually happen unless the principals of the new business have been burned by a trademark problem in the past. Similarly, you should have your trademark attorney check before you begin using a logo or other way of marking your business identity. Failing to do so can be an expensive problem to fix.