Intellectual Property Law

Is State Trademark Registration Appropriate for Your Mark (Part 2)?

By Michael Atkins

Yesterday’s post looked at the advantages of state trademark registration. Indeed, registration at the state level offers many advantages over common law protection and sometimes even over federal protection. Yet, dollar-for-dollar, most trademark owners get the most benefit out of federal registration.

Here’s why:

• Broader geographic scope. Once a trademark is used in interstate commerce, even if it’s with sales between customers in the bordering state, a trademark owner can apply for federal protection that will expand its common law rights to the entire United States. That means an owner will be presumed to be the exclusive user of the trademark in connection with the goods and services listed in its registration and will have priority over every other user that has not yet adopted the mark. That’s a big advantage in protecting one’s rights — particularly for owners who sell over the Internet or to customers in many states. Like state registration, federal registration also gives owners the presumption their trademark is valid and that they own it. 
• Incontestability. After five years, upon filing the necessary paperwork, a registration for a mark that has been used substantially exclusively and that has not been the subject of challenge can become “incontestable,” which cuts off the challenges a third party can make to its validity. After that time, the registration can’t be cancelled for being merely descriptive, among other things (though it can still be cancelled if it becomes generic, is abandoned, or was acquired through fraud).
• Examining Attorneys. Let the government help you police your trademark. Having a federal registration will lead the PTO’s Examining Attorneys to refuse applications for registration that are confusingly similar with your registered marks. You don’t have to do anything further to reap the benefits of this protection.
• The Circle-R. Once you’ve got a federal registration, you can (and should) put the world on notice of your rights by displaying the ® sybmol, which warns potential competitors not to get too close to your mark when selecting their own marks.
• Longer intent-to-use period. Some states offer short “reservation” windows in which an owner can tie up a potential trademark before commencing use. The U.S. Patent and Trademark Office allows intent-to-use filers to do so for up to three years (though it’ll cost you $150 for each six-month extension).
• Get help from Customs. A federal registration also enables owners to get help from the U.S. Customs and Border Protection. This can be a great help in stopping counterfeiters.
• Sue in federal court. We’ve got wonderful judges on our federal bench who know what they’re doing when it comes to trademark law. Having a federal registration is your ticket to federal court when you need judicial help enforcing your rights.

Full post as published by Seattle Trademark Lawyer on July 22, 2008 (boomark / email).