According to the United States Patent and Trademark Office (USPTO) a trademark is a brand name that can include words, names, symbols, devices, or any combination of those with the intent to identify and distinguish a specific good or service from those of others. The protection, requirements, and benefits that come with federal trademark registration are fully described in the 1946 Lanham Act, which is included in 15 U.S.C. § 1051 et seq. The common law trademark protection starts as soon as one uses the trademark in commerce.
However, simple common law protection makes the process of proving trademark infringement a long and difficult one. While businesses from within the United States do not need an attorney and can complete the trademark registration process on their own, the process to register a trademark correctly is a complex and complicated one. An experienced intellectual property rights attorney, Robert Sciglimpaglia, Attorney at Law at (203) 663-2803, can explain the benefits of trademark registration and how to ensure your legal rights remain protected.
Getting state registration only protects your trademark in your local jurisdiction. This means that you can sue someone for infringement if they use the same or similar symbol as your business. However, with state registration, businesses in other states or countries can use the same trademark, which could prevent you from expanding your business beyond your state. While you may start your business intending to stay local, it is best to consider all possible options and protect the trademark not only on the local level but also on the federal level.
Another benefit of trademark registration is getting it ‘bulletproof’ after five years of registration. That means that after a trademark has been registered for at least five years, its owner can apply for incontestability status. If granted, the status eliminates certain challenges a trademark may possibly face, such as being claimed to be confusingly similar to another, being functional, or lacking secondary meaning.
Access to Federal Courts
Having a federally registered trademark allows for much easier access to federal courts. Owners of the trademark can sue in any district court in the United States and try to enforce their rights to the trademark. While unregistered trademarks may be able to get into the federal courts, it is much more difficult and takes more time.
Ability to Recover More Money
With a federally registered trademark, a business or individual is able to recover more damages than if the trademark was not registered at all or only registered locally. One of many benefits of trademark registration is the ability to recover up to three times the amount of actual damages in an infringement case, plus attorney fees related to the action. If you find yourself struggling to protect your intellectual property, contact an experienced attorney, Robert Sciglimpaglia, Attorney at Law, to learn more about your intellectual property rights and ensure they remain protected.
Deters Others from Using the Same Trademark
Having a federally registered trademark allows a person or business to use the symbol of a circle R to put others on notice that the trademark has been claimed. This method of putting others on notice means that a defendant in an infringement claim cannot use the defense of ignorance of the trademark.
In addition, registered trademarks appear in searches when someone attempts to use a similar trademark. Lastly, when USPTO is aware of a certain registered trademark, the federal agency may refuse registration of a trademark so similar to the one already registered, that it would cause confusion between the two businesses.
The 1956 Lanham Act
The 1946 Lanham Act (Act) enacted by Congress in 1946 provides further information on the eligibility, requirements, and benefits of trademark registration. Since not all trademarks qualify for federal registration, consider visiting with an experienced attorney who understands the entire Act and can assist throughout the entire process of trademark registration
Use In Commerce Requirement
Section 1127 of the Act requires that the owners of the trademark must have a bone fide intent to use the trademark in commerce, if it is not already being used. If it is being used, parties must show proof of it is used in commerce. If it is not, owners must establish in writing, a good faith intent to use it in commerce in the future. Without showing one of those two options, the USPTO has the right to deny the application.
The trademark’s distinctive look addresses its ability to distinguish a given good or service from others. A trademark will be categorized as one of four types listed below when the application for a federal trademark is filed.
Arbitrary/Fanciful or Suggestive
It is by nature distinctive from other marks and its exclusive rights are determined by priority of use.
In order to be eligible for trademark registration under this category, the trademark must have acquired a secondary meaning in the public’s eyes. However, the secondary meaning must be established only for a personal name or geographic term. It is more difficult to receive registration in this category than it is in the above-mentioned two.
Trademarks in this category will most likely be denied registration as they refer to a general class of products or services and have no unique characteristics that would qualify them for trademark registration and all the benefits that come with trademark registration.
Working with an experienced attorney ensures that all the USPTO and federal requirements are met and that the individual or business can get full protection for their trademark.
Learn the Benefits of Trademark Registration From an Experienced Attorney
If you or your business are considering registering a trademark, call an experienced attorney, Robert Sciglimpaglia, Attorney at Law at (203) 663-2803, who can explain the benefits of trademark registration to you and ensure your intellectual property remains financially and legally protected.