in: Legal
by: Anthony Verna
There are several reasons for registering:
1. Geography. All registrations are good in all fifty states and all territories of the United States.
Any trademark that is not registered is called a “common-law trademark” and its first issue is that it can only be enforced within the geographic area in which it is used.
2. Public notice. In a trademark registration certificate, the owner of the intellectual property is listed. The public is able to view this information.
3. Public descriptions. In a trademark certificate, the goods and services are listed.
This means that the public has notice of the owner of the trademark and of the goods and services which the trademark represents. It is incumbent upon any potential registrant to do its due diligence to find any uses of similar trademarks, because those marks are up for public review and examination.
4. Barriers to enforcement. If a trademark is not registered, it is considered a common-law trademark. The goods/services and geography of the mark must be argued in court if there is infringement. That common-law mark also may not be subject to extra damages (treble/triple damages when appropriate, attorney’s fees in “exceptional cases” and costs), meaning that only actual damages may be awarded, also.
5. Federal law. The power of federal law to help with damages in any intellectual property lawsuit comes only with registration. State trademark laws are weaker than federal trademark laws.
6. Ease of cataloging. This is a thought that not many people have. If a mark is registered, then there is a registration number. That number is a simple reference in licensing and sale agreements.
7. Cost of enforcement. Although trademark litigation costs are difficult to estimate, the AIPLA 2007 Economic Survey found that if less than $1 million is at risk in the trademark litigation, mean costs are $184,000 through the discovery phase and $327,000 if the litigation is concluded through trial. With a trademark registration, you can file opposition proceedings that are cheaper than federal lawsuits. Many up-front trademark lawsuit costs are also cut by filing and registering the marks. This means that the goods and services are defined and the geography is defined by the trademark registration process.
A trademark opposition proceeding is a lawsuit that is in the Trademark Trial and Appeal Board, a federal administrative court. It can only be filed against trademark applications that have reached a certain stage of the application process, called publication. A trademark cancellation proceeding is a lawsuit that is filed against a trademark registration to cancel it.
