Federal registration with the United States Patent and Trademark Office (USPTO) or any state trademark office is NOT required to vest trademark rights. Actual use of the mark has always been the touchstone of trademark rights.
However, there are significant advantages to federal trademark registration on the USPTO principal or supplemental registry.
Because the use in commerce standard is more clearly defined under United States Code Title 15 (otherwise known of the Lanham Act or Federal Trademark Law), owners of registered trademarks have a significant legal advantage, the presumption of ownership and trademark validity nationwide. The registration can also be used as evidence that the mark does indeed function as a mark and is not confusingly similar to other registered marks.
Other legal advantages to federal trademark registration include:
- Public notice of claim of ownership of the mark
- Legal presumption of ownership and nationwide exclusive right in connection with the goods/services
- The ability to bring an action concerning the mark in federal court and recover attorney fees
- The use of the U.S. registration as a basis to obtain registration in foreign countries
- The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP)
- The ability to use the federal intent-to-use application filing system under 15 USC 1051(b) (ITU Applications) – Invaluable for startups and new businesses
- The right to use the federal registration symbol ®
- Listing in the United States Patent and Trademark Office’s online databases which makes discovery by those doing trademark searches easier – This can serve as a deterrent to prevent the adoption of confusingly similar marks by third parties.
Whether you sell tires, software, or corporate bonds, branding is a key component of product sales. Given the importance of trademarks, logos, and slogans to a company’s intellectual property portfolio and competitive barrier strategy, and given the unforgiving penalties of trademark infringement and brand name disputes, federal trademark protection through federal trademark registration and due diligence is essential to business, brand identity, and customer loyalty.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal in 2014. Office: Ph: 310-751-0181; firstname.lastname@example.org.
Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2015. All rights reserved.