A federal trademark registration issued by the United States Patent and Trademark Office (USPTO) provides you with many important protections and benefits. First, a federal trademark registration is prima facie evidence of (1) the validity of the registered trademark, (2) your ownership of the registered trademark, and (3) your nationwide right to use the registered trademark in commerce in connection with the products and/or services listed in the trademark registration. These benefits are extraordinarily helpful should you ever have to file a lawsuit against an individual or business that you believe is infringing upon your trademark. They are also quite valuable in the event that you are ever sued for trademark infringement.
Another advantage of obtaining a federal trademark registration is the ability for the registered mark to attain “incontestable” status. A federally registered trademark that has been in use for five consecutive years after its registration date may become incontestable by filing a Declaration of Incontestability under Section 15 of the Trademark Act. Once a trademark registration is incontestable, the validity and ownership of the registered trademark cannot be challenged by a third-party in any subsequent litigation.
Obtaining a federal trademark registration puts the entire world on constructive of your rights in your trademark. The USPTO database is freely accessible by the general public. If someone wants to know whether a particular trademark is federally registered for certain products or services, all that person has to do is search the Trademark Office’s database (or hire a trademark attorney to do so) in order to find out that information.
In addition, ownership of a federal trademark registration allows you to use the ® symbol in connection with your trademark, which puts the world on actual notice of your federal trademark rights and can act as a deterrent to others who may be considering adopting an identical or confusingly similar mark. A trademark registration also offers you the opportunity to register your mark with United States Customs and Border Protection in order to help prevent the importation of infringing goods It can also be used as a basis for expedited registration of your trademark in foreign countries.
Finally, a trademark registration must be renewed every ten years by filing a Declaration of Continued Use and Application for Renewal. However, please remember that you must also file a Declaration of Continued Use between the fifth and sixth year of registration. If the proper documentation is not timely filed, your trademark registration will be canceled and all associated rights will be lost.
In conclusion, I like to think of a federal trademark registration as an insurance policy. You purchase automobile insurance in the event you are involved in an accident. You buy insurance on your home in case it goes up in flames. And you purchase health insurance in the event you become ill. Of course, you hope you never have to use your insurance policies, but you’re extremely glad you bought them in the event a tragedy occurs. Similarly, federal trademark registrations are insurance on your trademarks in that they assist you in protecting your most valuable business assets as well as in recovering damages you will likely suffer as a result of an infringement or misappropriation by a third-party.
