U.S. federal law recognizes trademark rights even without a federal trademark registration. 15 USC 1125(a). Unregistered trademark rights also may exist under state common law. Unregistered trademark rights generally are acquired by using a mark as a source identifier in the sale or provision of goods or services.
If you can obtain trademark rights by simply using the mark without registering the mark, why bother seeking a federal trademark registration? The short answer is that a federal trademark registration strengthens the trademark owner’s rights and provides numerous benefits that are not available without a registration. The long answer is as follows.
Nationwide Protection
Common law rights extend only to the geographic areas where the mark is used in connection with providing goods or services. By contrast, a federal trademark registration provides nationwide rights in the mark, assuming you were the first to use it in connection with your goods or services, without requiring you to provide those goods or services throughout the country. 15 U.S.C. §§ 1057(b), 1115(a).
In a trademark lawsuit, establishing common law rights typically requires you to prove the geographic scope of your use of the mark, including your sales. Gathering evidence of that geographic scope can be burdensome. By contrast, if you have a federal registration, you may be able to rely at least in part on the registration’s nationwide protection without having to show use throughout the United States.
Avoid the Race to Market: Priority Against Later Users
Filing a trademark application that ultimately matures into a registration gives the owner priority as of the application’s filing date.
15 U.S.C. §1057(c) provides in part “Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except [prior users of the mark, and prior trademark application filers].”
Therefore, the filing of a trademark application that becomes a registration, provides the owner with superior, priority rights, against users that start use of the mark or that apply to register the mark after the owner’s application is filed.
If you are not using the mark yet, you do not have to rush to establish trademark rights through use. Instead you can file an intent-to-use trademark application. If that application later matures into a registration, it can provide superior rights, assuming the mark is otherwise registrable, against users who begin using the mark after the application is filed, even if those later users begin use before you do.
Persuasive Power of the Registration Certificate
The registration certificate is prima facie evidence of the validity of the trademark owner’s exclusive right to use the mark in commerce in connection with the goods and services identified in the registration. 15 U.S.C. § 1057(b). If you need to send a cease and desist letter to an infringer, attaching a certificate of registration can make the demand more persuasive, particularly for recipients who are unfamiliar with common law trademark rights, as compared with asserting rights based solely on use without registration.
Provides Constructive Notice of the Registrant’s Ownership Claim
A registration provides constructive notice to others of the owner’s claim of ownership of the mark. 15 U.S.C. §1072. Constructive notice means that others are deemed to have known about the owner’s claim of ownership, even if they did not actually know of it. This can strengthen the owner’s rights in a dispute.
Strengthens Trademark Rights Over Time
A trademark registration that has been registered for more than five years is no longer vulnerable to certain validity challenges, including descriptiveness. 15 USCS § 1064. As a result, a long-held registration may eliminate some defenses that an alleged infringer might otherwise raise. That, in turn, strengthens the trademark owner’s position.
In addition, after five years of registration, a trademark owner has an opportunity to obtain the status of “incontestability” by filing a Section 15 declaration provided that, among other requirements, the mark has been in continuous use for five years. Once a mark becomes incontestable, it can no longer be challenged on certain grounds. 15 U.S.C. §§1065, 1115(b)
Customs Assistance Against Importation of Infringing Goods
A federal trademark registration enables the owner to obtain the assistance of the U.S. Customs and Border Protection to prevent importation of infringing foreign goods from abroad. 15 U.S.C. §1124.
First Step to Simplified Foreign Trademark Protection
A federal registration provides a basis for using the Madrid Protocol’s streamlined process to seek trademark protection in foreign countries. 15 U.S.C. §1141b. To file a Madrid protocol trademark application at the USPTO seeking protection in foreign countries, you must first have a pending U.S. trademark application or an active U.S. registration for the mark.
Defense to State and Common Law Dilution Claims
A federal trademark registration is a defense to state or common law claims of trademark dilution. 15 U.S.C. § 1125(c)(6).
Court Characterization of Registration Benefits
The Supreme Court said “Federal registration …. confers important legal rights and benefits on trademark owners who register their marks.” The Federal Circuit Court of Appeals has likewise observed, “These benefits [of a federal trademark registration]–unavailable in the absence of federal registration–are numerous, and include both substantive and procedural rights.”
If you are serious about protecting your mark, consider registering it on the principal register.
