Why register your trademark?

16 Trademark is defined as a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the good/services.

Patents, copyrights, and trademark are often confused by many people: There may be some similarities, however, they are different types of intellectual properties and serve entirely different purposes.  In a nutshell, a copyright protects the contents of an original artistic or literary work, and patent protects a new and novel invention.  Trademarks, on the other hand, protect the intellectual property that identifies goods and services, not the goods and services themselves.

Trademarks can also last indefinitely, so long as the owner continues to use the mark to identify the goods or services, and complies with the renewal requirements. On the contrary, patents typically expire after 20 years, and copyrights generally expire 70 years after the death of the creator.

Assuming that a trademark qualifies for protection, in the United States rights to a trademark can be acquired in one of two ways: (1) by being the first to use the mark in commerce; or (2) by being the first to register the mark with the U.S. Patent and Trademark Office (“USPTO”). This means your rights began to accrue as of that date of “first use” (this is commonly referred to as having “common law” rights). Hence, anyone who “uses” a mark has a legal trademark under the common law.  On the other hand, an owner has a “registered” trademark when the mark is listed either on the Principle Register, or the Supplemental Register of the USPTO.

Common law trademark rights are legitimate, however, registering a trademark through the USPTO is potentially an easy and cost-effective way to establish and enforce trademark rights. Owning a federal trademark registration provides several advantages, including:

  • Discourages others from using confusingly similar marks in the first place by making the mark easy to find in a trademark availability search, thereby preventing problems before they even begin.
  • Protects against registration of confusingly similar marks, as the Trademark Office has a duty to cite prior registrations against applications for confusingly similar marks and to refuse to register such marks, thereby enlisting the power of the US Government in helping to prevent infringement at no additional cost to you.
  • Treats the mark as if used nationwide as of the application date, which is vital in a system in which first use wins-otherwise, your rights are limited to the geographic area of use or reputation of the mark, potentially allowing others to use the same mark in another geographic area and leading to inevitable confusion when one or both parties expands.
  • Provides nationwide notice of ownership of the mark as of the registration date, preventing others from claiming their subsequent adoption of the mark was in “good faith”.
  • Serves as evidence of the validity and exclusive ownership of the mark for the goods and services listed in the registration, with heightened protection after five years and the possibility of becoming “incontestable,” which can help not only in court proceedings but perhaps more importantly in quickly convincing others to cease using a mark without the need to go to court.
  • Grants the right to use the ® symbol when the mark is used for the goods and services listed in the registration (If you claim rights to use a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the USPTO. However, you may only use the federal registration symbol “®” after the USPTO actually registers a mark, and not while an application is pending).
  • Grants the right to sue in federal court and, in certain cases, obtain treble damages and attorney fees, thereby providing for potential significant monetary recovery in appropriate cases.
  • Entitles you to certain statutory damages in the case of counterfeiting, relieving you from having to demonstrate actual damages in order to receive a monetary award.
  • It can be used as collateral if needed, and is easily transferable.
  • Provides a basis for foreign registrations, facilitating protection of your marks worldwide as business expands.
  • Empowers US Customs and Border Protection to block imports that infringe the mark or are counterfeits once the registration is separately “recorded” with Customs, putting Customs in your corner in preventing infringement at no additional cost to you.

We help clients from ALL 50 states and AROUND the world, with conducting a trademark search, obtaining the U.S. federal trademark, or responding to a trademark office action, and providing legal representation before the United States Patent and Trademark Office. For more information contact us. We look forward to serving you.

 

 

 

Gokhan Yazici

Gokhan Yazici is an experienced attorney and counsellor practicing in the state of New York. He is specialized in U.S. Immigration Law, Corporate & Business Law, Business Transactions, Commercial Litigation, International Trade & U.S. Customs Law. Mr. Yazici holds an LL.B. degree from Istanbul University Law School and an LL.M. degree from Temple University James Beasley School of Law.