By: Vivek Vaidya
WHAT IS A TRADEMARK?
A trademark is a word, phrase, slogan, symbol or design that indicates the source of a particular product or service to consumers. It is a branding mechanism that is meant to differentiate your products/services from other companies and other products/services. A trademark helps consumers make decisions about what to purchase because the mark or symbols represent a reputation. Put simply, having a strong trademark is an essential asset to any company.
WHAT ARE THE BENEFITS OF TRADEMARK REGISTRATION?
Registering your trademark with the United State Patent and Trademark Office (USPTO) provides immediate benefits. Here is a list of some of the most important benefits of registration:
– Presumption that registrant is the rightful owner. In the case of a trademark dispute, the burden is on the non-registered party to prove they are not the infringing party. Practically this means that if you have registered your trademark or service mark on the USPTO’s federal registry, you have a tactical advantage because the court will presume you are the rightful owner of the mark in all 50 states.
– Discourages the use of the mark by other companies. When a company forms and decides upon a name, they routinely search for competitors. A new company is much less likely to choose a mark that already exists or is similar to one that exists to avoid the risk of infringement.
– Prevents registration of similar marks with the USPTO. When the USPTO decides whether to allow the registration of a mark, they look at other marks that have been registered that may be confusingly similar to the applicant’s mark. Therefore, if you register your mark, the USPTO polices your mark and protects your brand for you by preventing other companies from registering a similar mark.
– Rights are given as soon as an application is submitted. Federal trademark rights begin when the application is filed with the USPTO, not when the registration is approved. Therefore, the sooner you file an application, the sooner your rights are established.
– Protection against foreign companies importing products with your mark. Federally registered trademarks can be registered with U.S. Customs and Border Protection, who will protect your mark for you by denying entry of products that are shipped into the United States using your mark. They essentially police foreign counterfeit imports for you because your mark is registered with the USPTO.
– The power to bring a lawsuit in federal court. Registering with the USPTO is imperitive for suing others for trademark infringement under the Lanham Act in federal court.
– Statutory Damages. While punitive damages are not available in an infringement suit under the Lanham Act, judges do have great discretion in enhancing damage awards beyond the plaintiff’s monetary damages and the defendant’s profits subject to the principles of equity. Where there is willful trademark infringement, a judge can award three times the actual damages and profit loss to a successful plaintiff, and a plaintiff in a trademark counterfeiting suit may recover up to $1 million in statutory damages instead of actual damages or profits.
– Use of the famous ®. Only a registered trademark may use the symbol ® next to their trademark. This symbol not only puts others on notice that the trademark is registered and that they cannot register or use a similar mark in association with similar products or services, but it brings an aura of legitimacy to any company. It conveys that the business owners are serious about their brand, that they protect it, and that they care about the quality of products that it is associated with.
I WANT TO REGISTER MY TRADEMARK. WHAT’S THE NEXT STEP?
Call the Bend Law Group, PC at (415) 633-6841.