Why Register a Trademark?
Registration of a trademark, although not mandatory, is recommended because registration can substantially expand the common law rights of a trademark owner. A trademark may be registered federally at the USPTO if used in interstate commerce. Moreover, a trademark may be registered at the registration office in any of the 50 states where used.
In general, state registrations offer only limited additional benefit over no registration. A state registration in a particular state can accord standing to sue in that state’s courts of law, pursuant to corresponding state statutes. Further, a state registration can aid in proving priority of use. However, state trademark laws, and especially the level of protection accorded trademark owners by state trademark laws, vary widely from state to state.
Federal registration of a trademark at the USPTO is strongly recommended because federal registration provides nationwide rights. Federal registration expands common law trademark rights in at least the following ways:
(a) Nationwide Rights – Under U.S. common law, rights extend only throughout the geographical areas where the mark has actually been used or become known. A junior party in a remote location can adopt a senior party’s mark for identical goods or services and successfully defend against an infringement claim on the basis of good faith, ignorant adoption. Under these circumstances, the junior party can even claim superior rights in its own territory and prevent the senior party from expanding use into the junior party’s territory. However, if the senior party’s mark is federally registered at the USPTO, then the good faith, ignorant adoption defense is unavailable to a junior user in an infringement suit because the junior party is on legal, constructive notice nationwide.
(b) Federal Jurisdiction – The federal registration at the USPTO creates federal question jurisdiction for infringement suits. Hence, a federal registration accords standing to institute lawsuits against parties in federal court. This can be a tremendous advantage. Trademark suits in federal courts minimize any prejudice that might be experienced by a litigant who is foreign to a particular geographical region. Moreover, the outcome of federal trademark suits is more predictable than in-state trademark suits because of the extensive federal case precedent that has developed over many years.
(d) Federal Statutory Remedies – Federal statutes prescribe recovery of profits, damages, and costs, as well as equitable relief in the form of injunctions and seizure orders. Even treble damages and attorney’s fees can be obtained in exceptional cases.
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