Brand and Trademark Protection - Page 2

Benefits of Federal Trademark Protection
There are many important benefits that a company gains from owning a federal trademark registration that are not available through state or common law trademarks rights.
A federal trademark registration:
• Gives others constructive nationwide notice of a company’s claim to its trademark. It excludes others from using the same or a confusingly similar trademark anywhere in the United States.
• Permits use of the “®” symbol with a company’s trademark, which signifies that it is federally registered.
• Constitutes clear evidence that a company’s trademark registration is valid and that it has exclusive rights to use its trademark in commerce.
• Allows a company the potential to obtain “treble” damages (three times its assessed damages), lost profits resulting from the infringing use of its trademark, and/or attorneys’ fees, should a company file an action in federal court for trademark infringement.
• Enables a company to obtain trademark “incontestable” status after five years of continuous use, which precludes others from attacking its trademark registration on certain grounds.
• Enables the USPTO to cite a company’s trademark registration against another party’s trademark application for the same or a confusingly similar trademark. This can lead to that party discontinuing its plans to use that mark.
• Strengthens a company’s legal position when asserting its rights against a party who is infringing its trademark. A party infringing a federally registered trademark would have less of a defense that its infringement was innocent.
• May increase the value of a company and its appeal to others contemplating a potential partnership, merger or acquisition.
• Allows a company to record its trademark registration with U.S. Customs to prevent the importation of infringing goods bearing the same or a confusingly similar trademark.
 

Don’t Wait to Obtain Federal Trademark Protection
Obtaining a federal trademark registration from the USPTO typically takes up to a year or more from the time of filing. Thus, early registration should be a priority to ensure that a company reaps all the benefits of registration as soon as possible.
By waiting, a company risks that another party may file for and/or obtain a federal trademark registration for the same or a confusingly similar mark before it does. Such an occurrence can make it more difficult and expensive for a company to register its trademark later on. This could prevent a company from registering its trademark altogether.
Moreover, it is easier for a company to take action against an infringer when it already has a federal trademark registration. This is much more effective than starting the registration process upon learning of the infringement. A company may sue an infringer for trademark infringement in federal court upon learning of the infringement. Moreover, a federal trademark registration strengthens a company’s position when making a demand that an infringer cease and desist from the infringing activity.
Additionally, a company can stake claim to a proposed trademark even before it is being used in commerce by filing an intent-to-use (“ITU”) based trademark application. This can be an extremely valuable tool since it often takes months or years to develop a brand and bring it to market. The filing of an ITU based trademark application affords a filing-based priority date over any party who starts using the same or a confusingly similar trademark after the ITU based trademark application filing date.

Conclusion
A company’s brand and its trademarks are often among its most important assets. Thus, a company should make obtaining federal trademark protection for its trademarks a top priority. Given the numerous benefits, it is often in a company’s best interest to obtain federal protection for its trademarks.
Contact:: Rachel Santarlas, an Attorney at Wolff & Samson PC, 973-530-2064 or This email address is being protected from spambots. You need JavaScript enabled to view it.