A Publication of WTVP

In this tight economy, it is imperative for consumers to think of your brand before making a purchase. You want your brand to spring into consumers’ minds every time they consider the product or service your firm offers. Loyal brand recognition arises from positive experiences and other goodwill that consumers associate with your brand. As a result, it is important to protect and strengthen your brand. The most important way to strengthen your brand is to maintain a strong trademark or service mark to keep consumers coming back to your familiar mark and to keep the competition from edging into your market.

A trademark is any name, word, phrase, slogan, symbol or design that is associated with your product and distinguishes it from other similar products. A service mark is any mark that distinguishes your services from similar services offered by others. It serves the same source-identifying function as a trademark. You get the ultimate protection for your mark by registering your trademark or service mark with the United States Patent and Trademark Office. Some of the benefits of registration include:

Prevent Competitors from Using a Confusingly Similar Mark
The most important advantage to registration is that the entire world gains actual or constructive notice of your mark, your ownership of the mark, and your goods and/or services.

If a competitor attempts to register a mark that would be confusingly similar to consumers, the United States Patent and Trademark Office will refuse registration of the competitor’s mark. Also, anyone searching marks or brand names will easily find your mark on the registration system. Prudent businesses searching will purposefully avoid causing any confusion with your mark to minimize exposure to any infringement or unfair competition lawsuit. This protection will save unnecessary litigation fees. It will also stop competitors from selecting a mark that is confusingly similar to yours, helping to set your brand apart in the marketplace.

Nationwide Priority
Without registration, you must use your mark in a territory to have protection within that limited territory. Since most businesses do not rapidly spread across the country, national expansion becomes very risky without federal trademark registration. If a competitor is using your mark or a similar mark in a different territory, and you are not federally registered, the competitor would have priority within the geographic territory of its use, limiting your growth and expansion. To open the door for national expansion under your mark, it is imperative that you register your trademark federally. Registration automatically creates “actual notice” or “constructive notice” and informs competitors on a national basis that your mark is your exclusive property to use on a nationwide basis.

Prima Facie Validity
Registration can serve as prima facie evidence of the validity of your mark if it is contested in court or at an administrative hearing. Registration is also prima facie evidence of your ownership of the mark and that the mark relates to your products or services. These presumptions can be overcome only by presenting strong evidence to the contrary. These benefits of registration reduce litigation expenses if you must go to court.

Sue in Federal Court
Once your mark is registered, you automatically have the right to sue any potential infringer in federal court. There are many procedural advantages within the federal court system for enforcing your trademark. Without registration, it may be difficult to bring your lawsuit in the most desirable venue.

Collect Treble Damages and Attorneys’ Fees
Once your mark has been registered, you will be able to sue infringers for treble damages for any willful infringement. In addition, there exists the possibility that the court would award attorneys’ fees in exceptional cases where the infringement is found to be intentional. No such rights exist in the absence of registration.

Protect Imports
As the owner of a federally registered mark, in the event you import any products from overseas, you are entitled to receive invaluable assistance from the U.S. Customs Service against unscrupulous importers of counterfeit and infringing goods. A trademark owner can record the federal registration with U.S. Customs, and U.S. Customs will prohibit the importation of counterfeit and infringing goods, and will also help track illegal activity. The ability to stop infringing products from entering the country can be invaluable to protect your brand and your profits.

Incontestable Status—Best Protection Under Federal Law
After your mark has been used continuously for five years following registration, your mark may become incontestable. Once your mark is incontestable, no competitor can successfully argue in a lawsuit or administrative hearing that your mark is confusingly similar to another mark older than yours, that it is merely functional, or that it is not associated with your particular product or service in the mind of consumers. If you are required to go into court and dispute any matter regarding your mark, incontestability automatically places your mark in a much stronger position. Litigation costs are greatly reduced. Incontestability cannot guarantee your mark will never be attacked by a competitor; however, it will give you the highest federal protection available as backing in court.

The cost of federal registration is extremely minimal compared to the advantages gained through registration. If you are serious about developing brand recognition and brand loyalty with consumers, registration of your mark with the United States Patent and Trademark Office is a necessity. iBi