At the beginning of this new year, it helps to remind ourselves why we engage in this work, why trademarks matter, and, more particularly, why registration matters. Trademarks symbolize the goodwill of a business; they are the emblems of the brand owner’s reputation. Registrations strengthen and protection those important symbols.
The benefits of U.S. federal trademark registration on the Principal Register are many:
- Prima facie evidence of the registrant’s exclusive right to use the mark nationwide with the goods and services identified in the registration (subject to limitations specified in the registration);
- Prima facie evidence of the validity of the mark and the registration of the mark;
- Prima facie evidence of the registrant’s ownership of the mark;
- Constructive use of the mark as of the application filing date and nationwide priority against others except those who (prior to the application filing date) used the mark, filed an application to register the mark, or could claim priority to a foreign application;
- Constructive notice of the claim of ownership of the mark;
- Listing of mark on trademark register of the United States Patent and Trademark Office;
- Right to use the ® symbol to notify third parties the mark is federally registered;
- Right to claim certain advantages in seeking registration of the mark abroad under certain international treaties;
- Right to record the mark with U.S. Customs & Border Protection (“CBP”);
- Right to bring an action in federal court for trademark infringement;
- Right to receive certain remedies in enforcement actions
Some of the foregoing benefits may seem abstract or unimportant, but in certain circumstances they can make all the difference. In the previous Trademarkology blog post, John wrote about a recent case that illustrates the benefits of obtaining a registration and obtaining it sooner rather than later. In that case, the U.S. Court of Appeals for the Federal Circuit ruled that a registration affords the trademark owner the presumption of validity of the mark after the registration date, but not before. That gives the trademark owner a distinct advantage in enforcing its rights to stop infringement that begins after the date of registration, but makes it very difficult to enforce rights against infringers who began infringing before the date of registration. The challenge only increases when the mark at issue is trade dress that is only protectable with proof of secondary meaning. Secondary meaning can be difficult and expensive to prove at any time, but especially if the proof must show that the trade dress had acquired distinctiveness many years ago and must be presented in the context of an adversary proceeding. The brand owner would much prefer to have presented the evidence in the ex parte context of prosecuting the trademark application so it could then rely on the presumptions afforded it by the resulting registration during the dispute with the infringer.
A brand owner may never even realize they are receiving certain benefits from their registration. Having the mark on the register makes it easy for others to find and discourages others from selecting and adopting confusingly similar marks.
Even mark owners who are less concerned about their ability to enforce rights and more concerned about their ability to defend their own use of a mark should consider federal registration. Having a registration affords one a much better defense posture against actual and potential infringement claims than use alone. For example, the registration may provide one with a better argument that there is no likelihood of confusion (if the registration was obtained over the plaintiff’s own registration). When the owner of an unregistered mark seeks registration and encounters an obstacle due to a junior user’s registration, the registration may give the junior user greater leverage in negotiating resolution.
In addition to the benefits afforded a registrant under statute, there are ancillary benefits that can assist mark owners in protecting their brands, especially online. Certain third party platforms (such as Amazon) allow brand owners to record their marks with the platform’s registry to allow the platform to assist in enforcement against infringing sellers. But to register with Amazon’s brand registry and take advantage of that benefit, it is necessary for the mark to be registered. Similarly, some social media platforms require registration to enforce certain rights. For example, Twitter has a two-tiered process for trademark protection. One process allows owners of registered marks to complain about infringements and the other allows owners of unregistered marks to complain only about impersonation.
Mark owners can leverage federal registrations to obtain protection and enforce rights in a variety of contexts. They can record the registration with CBP to empower CBP to help stop the importation of counterfeit goods. They can rely on federal registrations to prove one element required in a UDRP dispute much more easily than can be done in the absence of a federal registration (and they can avail themselves of certain kinds of domain name dispute resolutions, such as the URS, that are less expensive and faster, but are not options for those without registrations).
Of course each brand owner has to decide when, how, and to what extent to protect the marks it uses. But when considering whether to register a mark, it is important to think about the practical implications of the statutory advantages as well as the ancillary advantages to registration.