Most businesses use a unique name, logo, or symbol (a “trademark”) to help customers recognize their products or services. In many instances, a trademark registration can help those businesses protect the goodwill associated with their trademarks.
Any business using a trademark to identify the source or origin of goods or services online or otherwise across state borders may be able to pursue registration of the mark within the United States Patent and Trademark Office (“USPTO”). Although limited trademark rights are created by use of a name, logo and/or symbol to identify source or origin, owning a federal trademark registration on the USPTO’s Principal or Supplemental Register provides several advantages that help protect and enforce the trademark. Some of these benefits include:
- Constructive and public notice of a claim of ownership mark, and inclusion of the mark in the United States Patent and Trademark Office’s online databases;
- The ability to bring an action concerning the mark in federal court; and
- The right to use the federal registration symbol ®. Marks that are not registered with the USPTO may not use the ® symbol. Unauthorized use of the symbol can be grounds for a penalty.
Inherently distinctive marks may be eligible for registration on the USPTO’s Principal Register, which provides additional benefits, including a rebuttable legal presumption of mark ownership, an exclusive right to use the mark nationwide on/in connection with goods/services listed in the registration, and the ability to achieve “incontestable” status after a period of time, which precludes an attack on the registrant’s ownership of the mark on the basis of prior use or descriptiveness.
An application for federal registration can be filed even before use of the mark has begun, if the applicant has a good faith intention to use the mark. So, an applicant can stake a claim in the mark before using it. (The mark has to be in use before any registration will be issued.)
Federal registrations are good for 10 years, then renewable for successive 10-year periods upon payment of a filing fee and submission of evidence of continued use of the mark.
For marks used locally, state registration can help provide public notice of a claim of ownership of a mark. These registrations are relatively inexpensive to obtain and maintain but do not have the benefits of federal registration described above.