Benefits to Registering a Trademark
There are several important benefits to registering a trademark that can only be obtained through a state or federal trademark registration. As the majority of business owners that contact our Charleston trademark attorneys seek to register a federal trademark, the following discussion will focus only on a few of the federal trademark registration benefits. If you are seeking a South Carolina trademark registration, please inquire with one of our trademarks lawyers to discuss these benefits.
Nationwide priority is generally the most important advantages to seeking a trademark registration on the principal register. Nationwide priority affords a registered trademark owner certain protections throughout the United States. Without a federal trademark registration, a trademark owner may be limited to only being able to enforce its mark in a certain geographic area, such as Charleston, South Carolina.
For example, if a business owner begins using a trademark in Charleston for XYZ in connection with a retail store on King Street, and a business owner in Chicago subsequently uses an identical trademark for XYZ in connection with an online store selling its goods nationwide and registers its trademark on the federal level with the USPTO, the prior user may be limited from expanding its retail store to new jurisdictions and geographic areas because the subsequent user now holds nationwide priority in the XYZ trademark. Thus, holding nationwide priority in a trademark is a valuable asset for any business owner launching a new product or service in the national marketplace.
Incontestability of a Trademark
A declaration of incontestability may be submitted by a trademark owner at any time beginning five years after the registration date. A claim of incontestability is available when (1) there has been no final decision adverse to the trademark owner’s claim of ownership or right to register the mark, (2) there is no such proceeding pending, (3) it is within one year of any five-year period of continuous and consecutive use subsequent to the date of registration, and (4) the trademark has not become generic.
Moreover, to substantiate a claim of incontestability, it is necessary for the trademark to have been used continuously in commerce for five consecutive years on each and every item claimed in the trademark registration’s description of goods or services. Frequently, problems arise in meeting this requirement when the trademark owner’s list of goods or services is not narrowly defined. In other words, our trademark lawyers in Charleston often address issues that arise when a trademark owner registers a trademark with an expansive list of goods or services that are not actually being used in commerce.
Incontestability protects a trademark owner from certain challenges to the validity of a trademark, notably challenges based on descriptiveness. Claiming incontestability is a tremendous benefit by putting on notice potential infringers via a cease and desist letter, setting forth that the trademark registration is active, valid, in full force and effect.
However, a trademark’s incontestability does not provide the trademark owner with an absolute protection against attack. It should be noted that trademark registrations are subject to cancellation at any time based on any of the following: (1) the trademark is generic; (2) functionality; (3) abandonment; (4) fraud; (5) immorality, deception or scandal; (6) disparagement; (7) false suggestion of a connection; (8) geographical indications; (9) representation of a flag or coat of arms of any nation; or (10) representation or name of a living person without his or her consent.
Trademark Infringement in Federal Court and Damages
The district courts of the United States have proper jurisdiction to hear cases involving all federally registered trademarks. If a trademark owner does not hold a federal trademark registration, it is more difficult to get its case in front of the federal courts if trademark infringement is identified. Further, trademark owners may have the ability to recover statutory trademark damages. For example, it may be possible for a trademark owner to recover damages up to three times the amount of actual damages in a trademark infringement case. Additionally, the trademark owner may recover attorneys’ fees to enforce the trademark infringement action in the federal courts.
Trademark Search Services
The first and most important step for any business owner, inventor, or entrepreneur in creating a trademark for its product or services is having a comprehensive trademark search performed to ensure the trademark is available. Our Charleston trademark attorneys offer clients flat fee trademark search services in connection with all 50 state databases and the federal database. Our law firm’s trademark search services include a comprehensive trademark search report and attorney memorandum explaining the results. Our Charleston law firm also has access to many other foreign country trademark databases, mobile application databases (Apple, Google, and Amazon), hospitality databases (restaurant names), and many other trademark databases for an additional fee.
For the majority of our trademark searches, the flat fee will be based on two hours of attorney time and generally take our trademark attorneys three days to complete.
Our Charleston law firm uses Corsearch, the premier trademark clearance and protection platform for trademark and brand solutions. Its high-quality, intuitive tools and unparalleled expertise enable professionals to effectively manage their trademark screening, search review, watching, and domain management processes. With highly trained researchers, an expansive global content set and customer-designed technology tools like the Corsearch platform, Corsearch empowers its customers with the ability to easily, quickly and flexibly monitor and protect their brands in an increasingly complex business environment.
Trademark Registration Services
Once the comprehensive trademark search is performed and the trademark(s), trademark class(es) is selected, our trademark lawyers will proceed to initiate the prosecution and registration of the trademark. A trademark applicant may seek registration of a federal trademark as long as the trademark is being used (or has intent to use), sold, offered, advertised, or promoted across state lines (i.e., in interstate commerce). A trademark applicant that cannot meet the interstate threshold and its products and services are offered within a state (i.e., intrastate), it may be limited to seeking a state trademark registration.
For South Carolina trademarks, the trademark registration process will only take a few weeks. For federal trademarks, the trademark registration generally takes 8-14 months.
Contact our Charleston Trademark Lawyers
Our trademark lawyers in Charleston provide counsel to those individuals and businesses that are serious about developing and protecting their company name, product names, service names, logos, and taglines. We assist clients in all aspects of the trademark process, from the trademark selection to its registration. Our law firm provides guidance to any entrepreneur or business in the process of launching their new product or service in the marketplace and will ensure their trademarks are properly cleared and protected.