In almost all cases, trademarks should be registered. They can be registered with the federal government – more specifically, with the United States Patent and Trademark Office – if you, as the trademark owner, use the mark in “interstate” commerce (most marks are used in “interstate” commerce). Most of the 50 states also allow for registration of trademarks if the trademark is used in the state where registration is sought. State and federal trademark registrations is a service provided by Lilenfeld PC.
Federally registering a trademark gives you national rights to it. Such a registration preserves your right to expand your use of the mark into geographic regions of the United States where you have not previously used the trademark. Without a federal registration, you will be hard-pressed to establish trademark rights in states you have not yet used the trademark.
A federal registration will also assist you in the event someone uses your trademark in a domain name, without your permission. Such a registration will make it easier to persuade the person who registered the infringing domain name to relinquish the domain name registration to you.
A federal registration will also serve as a deterrent to others who might be thinking about using a trademark similar to yours. A trademark registration shows that you are aware of and active in protected your trademark rights. And, after five years of continuous use of a trademark your registration may become even stronger, gaining what is called “incontestable” status.
Finally, if a dispute over your trademark does arise, a federal registration entitles you to a presumption from the court that your registration is valid. Your registration also entitles you to additional damages in the event it is found that your mark was infringed. And a federal registration makes it easier to work with the United States Customs Service to stop the importation into the United States of unauthorized goods bearing your registered trademark.
As you can see, registering your trademarks greatly strengthens your rights and will likely help you avoid disputes. We’ll post Part 3 of this 5 part series next week. Please check back!
David M. Lilenfeld