Why Federal Trademark RegistrationBy: Rose Massary

Trademarks, and the rights of trademark holders, are commonly misunderstood.  Many business owners want to know, what are the advantages of federally registering a mark?

A trademark is a word, phrase, symbol or design (or a combination of those things) that identifies and distinguishes the source of certain goods or services.  Essentially, a trademark is used to differentiate the goods and services of one company, from those of another.  It allows consumers to know exactly where their products are coming from.  Trademark rights exist at common law, state and federal levels.

Common Law

A “common law” trademark arises from the actual use of a particular mark in commerce; it exists regardless of registration with any state or federal body.  Owners of common law trademarks may use a “TM” symbol for identification purposes.  However, a common law trademark does not afford its owner with exclusive, nationwide protection.  The rights are limited to the geographic area where the mark is used and therefore, there is no way to prevent those in other regions from using the same, or a similar, trademark.

State Registrations

Trademarks can be registered at the state level.  Individual state departments place varying requirements on applicants and afford a variety of different benefits for trademark owners.  In New York, marks that are used in New York state commerce are eligible for registration.  Securing a New York trademark affords many benefits to local businesses, including awards of enhanced damages and attorneys’ fees in certain infringement circumstances.

However, registration with any particular state does not automatically grant exclusive protection throughout the entire country.

Federal Registration

To gain exclusive, nationally recognized protection and benefits, business owners can apply to secure federal registration of their trademarks with the United States Patent and Trademark Office (USPTO).  A trademark registered with the USPTO affords owners with many benefits, including:

    • Providing clear evidence of the exclusive trademark ownership and use;
    • The right to use the R symbol in connection with the mark, which puts the public on notice of the exclusive ownership;
    • Being listed on the USPTO database, allowing for fast and easy public access (potentially deterring competitors or third parties from using a similar or potentially confusing mark);
    • The right to sue for infringement in federal courts;
    • The ability to recover profits, damages, attorneys’ fees and costs for infringement;
    • Heightened protection that the mark can achieve after five years of registration;
    • The ability to have US Customs and Border Protection block the importation of goods bearing an infringing mark; and
    • Providing a basis for foreign registrations.

TM Application Rejection

Unfortunately, not every desired mark can be federally registered.  Once submitted, trademark applications are carefully reviewed by USPTO examining attorneys and can be rejected.  There are statutory restrictions that can prevent successful registration, including marks that are:

    1. confusingly similar to trademarks that are already registered or pending;
    2. merely descriptive of the specific goods or services or misdescriptive (meaning they deceptively misrepresent or falsely describe the goods or services);
    3. immoral, deceptive or scandalous; or
    4. disparaging or falsely suggest a relationship with a person (living or dead), an institution, a belief or a national symbol, including any mark which brings them into contempt or disrepute.

Moreover, once granted, trademarks can be revoked.  Recently the Trademark Trial and Appeal Board cancelled six registrations of the Washington Redskins football team, citing that the “Redskins” trademarks were disparaging to Native Americans, when used in relation to professional football services at the times the various registrations were issued.  Meaning, the Redskins will no longer be afforded the federal registration status and benefits, unless the decision is later reversed on appeal.

Even though federal trademark registration is not a requirement to use a mark in commerce, it can be a great way to protect your business, provide additional damages for infringement and promote your brand.  

Contributing Editor: Jessica Cox

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Rose Massary

Associate Attorney

(212) 865-9848

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