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February 3, 2023 | BusinessTrademark

Why Get a Federal Trademark Registration?

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Marc D. Ostrow

Of Counsel

Ru Hochen

Associate Attorney

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

What Is a Trademark?

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.

Can I Get Trademark Protection Without a Federal Trademark Registration?

Some level of trademark protection is available simply by using the mark.

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 agency.  Owners of common law trademarks may use a “TM” symbol for identification purposes.  However, a common law trademark does not grant its owner  exclusive, nationwide protection.  The rights in the mark are limited to the geographic area where it  is used.  Therefore, there is no way to prevent businesses in other states or regions from using a similar, or even the same, trademark.

State Registrations

Trademarks can be registered at the state level.  Each state has different requirements on applicants and the protections offered by state registration also vary from state to state.  In New York, marks that are used in New York state commerce are eligible for registration.  A New York trademark registration provides a greater level of protection than is available under common law,  including the possibility of increased damages awards and attorneys’ fees in certain infringement cases.  However, registration with any particular state does not automatically grant exclusive protection throughout the entire country.

Federal Registration Provides Broad, Nationwide Protection

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

  • Clear evidence of the exclusive trademark ownership and use;
  • The right to use the ® symbol in connection with the mark, which puts the public on notice of the federally authorized 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 recoverprofits, 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 importationof goods bearing an infringing mark; and
  • Providing a basis for foreign registrations.

Trademark Application Rejection and Cancellation

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. falsely suggesting 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.  For instance, the Trademark Trial and Appeal Board has cancelled registrations when the owner failed to use its mark for a period of at least three years after acquiring the mark, and intended not to resume use.

Trademark Applications Are Tricky

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.  However, applying for a trademark registration is a detailed process and there are application fees for each class for which an applicant wants trademark protection.  For example, class 25 is for clothing and apparel and class 41 is for education and entertainment services.  As noted above, an examining attorney at the USPTO may decide that a particular mark may not be registered but the applicant may file a response, citing precedent and providing additional information, as to why the mark should be registered.

Prospective applicants should consult a trademark attorney when considering applying for a federal registration.  Our experienced trademark attorneys are ready to help.  Please contact us with any questions.

Photo by Romain Dacre on Unsplash
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