In the United States trademark rights are acquired simply through the use of the mark in connection with your products (or services). You do not ever have to apply for a registration in order to claim these common law trademark rights. Why then would you go through the time and expense of filing for federal and state protection for your mark?
Although a federal or state registration is not required or necessary to acquire trademark rights obtaining a federal registration on the Principal Register avails the trademark owner of many advantages not provided under common law. First, having a federal registration provides a legal presumption of your ownership and exclusive rights to use your mark throughout the United States in connection with your goods (or services). Moreover, after five years of registration, your mark can become incontestable, with limited exceptions. Common law rights are limited to only the specific area(s) in which your mark has been used.
Federal Registration Supersede Common Law Rights
Registration of your mark also provides public notice of your claim of ownership of the mark. In fact, just filing an application for registration of your mark puts everyone on notice and can “freeze” the common law rights of other users of the mark. If you are relying solely on your common law rights and someone else obtains a federal registration for the same mark for the same goods (or services), your ongoing use of the mark could be limited geographically.
Having a federal registration for your mark provides you with the ability to record your registration with the U.S. Customs and Border Protection Service to prevent the importation of infringing foreign goods. The production and importation of counterfeit goods is a serious problem faced by many. This service can help identify and halt the sale of counterfeit goods.
Federal Court for Trademark Infringement Matters
A federal registration allows the owner to use the federal registration symbol ® and the ability to bring an action concerning your mark in federal court. Federal Court is preferred when dealing with trademark infringement matters as the law is well established and federal judges are well versed in trademark law.
Moreover, Internet websites, such as Amazon and eBay, require proof of a federal trademark registration prior to taking down competing listings that infringe your trademark. Leveraging these websites’ terms and conditions to “take down” infringing listings can be a cost-saving alternative to litigation.
Finally, the owner of a federal registration can use the United States registration as a basis to obtain a registration in foreign countries. With the widespread international exchange of goods and services through the use of the internet and so forth, obtaining protection for your mark beyond the borders of the United States is more important than ever.
Stronger Property Right a Valuable Business Asset
A trademark is a property right. For the reasons stated above, a federal registration provides you with a stronger property right and is thus much more valuable than a mere common law property right. Intellectual property rights, such trademarks, are sometimes the most valuable asset a business has and should be protected accordingly.