Trademark rights are acquired by using the trademark in commerce, not from registering the trademark; however, there are several important trademark benefits in holding a federal trademark registration on the USPTO Principal Register.
Automatic Right To Sue In Federal Court
Federal trademark registration makes it much easier to sue in federal court in the case of a trademark infringement lawsuit. The United States district courts have jurisdiction to hear cases involving all federally registered trademarks.
Ability To Recover Money
Federal trademark registration makes it possible to recover damages three times the amount of actual damages and recover attorney’s fees in a trademark infringement case. Registering a trademark with the USPTO makes it possible to recover the maximum amount of damages available.
Once a trademark is federally registered for five years, the owner may apply for incontestability status. If incontestability status is granted, challenges against that trademark for confusing similarity; functionality; or lack of secondary meaning by other individuals or business owners are discarded.
Nationwide Trademark Priority
Federal trademark registration allows the owner of the trademark nationwide trademark priority, which is arguably the most important of the federal trademark benefits. A registered trademark gives the trademark owner the presumption of nationwide use in his or her trademark rather than limiting the protection to the geographic area in which the trademark is being used in association with the product and/or service. If a business or business owner receives federal registration, he or she may prevent a prior user from expanding his or her business to new jurisdictions.
Advantages In Court
A trademark registration certificate from the USPTO proves the validity of the trademark, identifies the valid trademark and the product and/or service the trademark protects, and shows continuous use of the trademark in interstate commerce. This avoids the costs of having to produce documents that show a business or individual has been using the trademark in interstate commerce and proving that the trademark is not generic, descriptive, or confusingly similar to another trademark.
Registration In Foreign Countries Using U.S. Priority Date
If a business or business owner applies and receives a federal trademark registration trademark and would like to expand his or her business internationally, he or she may obtain these international rights with great ease via the “Madrid Protocol.” The member nations of the Madrid Protocol may obtain trademark rights in the other member nations. A trademark application for foreign trademark protection using the Madrid Protocol allows the trademark owner to file a single application and simply state which countries he or she would like to apply for protection in.
Deterrence From Using Your Trademark
Receiving federal trademark registration may deter others from using your trademark. Deterrence comes in two ways: (1) the USPTO must refuse to grant federal registration to a confusingly similar trademark, and (2) your trademark will appear on trademark searches when another individual attempts to use a trademark similar to yours. Having a registered trademark will let the trademark owner with exclusive right to to the use of the trademark be known.
Use Of The ® Symbol
Use of the ® (circled R), is only allowed for federally registered trademarks. Using the ® acts as constructive notice to all competitors in the marketplace that the trademark is claimed as an exclusive right. This means that a defendant in a trademark infringement lawsuit cannot claim innocence.