of a Federal Trademark Registration
In deciding whether to file a federal trademark application, clients
often ask about the benefits of a federal trademark registration.
This article will briefly review those benefits. For any company
that is doing business across state lines, the advantages of a
federal registration almost always outweigh the costs.
1. Federal jurisdiction. A federal trademark registration
confers on the owner the right to sue for trademark infringement
and/or dilution in federal court. Without a federal trademark registration,
the owner must sue in state court unless diversity jurisdiction
is present (i.e., where the parties are from different
states and the amount in controversy is over a certain dollar amount).
Related state law claims (such as unfair competition or misappropriation
of trade secrets) can also be asserted in connection with the claim
for infringement of the federally registered mark.
2. Legal presumption. A federal trademark registration
serves as prima facie evidence of the validity of the registered
mark, of the registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the registered trademark.
Thus, if someone wants to challenge your trademark rights, they
will have to overcome these presumptions in order to prevail. Furthermore,
after five years of continuous use in interstate commerce, the
registrant’s ownership of the mark becomes incontestable.
3. Descriptive Marks. Under Section 2(f) of the Trademark
Act, 15 U.S.C.
§ 1052(f), marks that would otherwise be refused
registration due to their descriptive nature (such as YELLOWSTONE
ART MUSEUM or ROCKY MOUNTAIN TECHNOLOGY GROUP) can be registered
if the applicant has used the mark continuously in interstate commerce
for a period of five years, and if the applicant submits a declaration
to that effect. In that situation, the mark is deemed by the trademark
office to have acquired distinctiveness by virtue of the longevity
4. US Customs. Marks that have been registered with the
federal trademark office can also be registered with US Customs.
US Customs will prevent goods bearing the registered mark from
entering the country. This remedy can serve as a powerful tool
against counterfeiters. US Customs will not protect unregistered
5. Foreign Trademark Protection. Federal trademark applications
and/or registrations can serve as the basis for international trademark
applications filed under the Madrid Protocol. (See http://www.teaselaw.com/newsletter/
2003_november.html for additional information on the Madrid Protocol.)
If the international trademark application is filed within six months
of the filing date of the US application, then priority can be claimed
back to the US filing – which means the applicant will have the
same priority date in all countries covered by the international application.
6. Constructive Notice. A federal registration serves
as constructive notice of the registrant’s ownership of the
mark in all fifty states. This eliminates the ability of non-registered
users to assert the common law defense of good faith and lack of
knowledge. With a federal registration, the owner of the registration
has trademark rights even in those states in which the registrant
is not currently doing business; however, a senior user (i.e.,
someone whose date of first use in a particular state pre-dates
the applicant’s date of first use in that state) will have
priority of use with respect to that state and any other states
in which the senior user was using the mark or had demonstrable
plans to use the mark as of the date of the federal registration.
In other words, the registration date cuts off the senior user’s
ability to expand into other states.
7. Remedies. A federal trademark registration affords
significant advantages in terms of remedies. The owner of a federal
registration may elect to receive statutory damages of up to $100,000
per mark in lieu of having to prove actual damages. For willful
infringement, the court may award damages of up to $1,000,000 per
mark. If the plaintiff elects not to pursue statutory damages,
then treble damages (i.e., three times actual damages)
may be awarded for willful infringement. In exceptional cases,
the court may award attorney’s fees (this is true for both
registered and unregistered marks).
It should be noted that the registered trademark symbol (®)
may only be used with a mark that has been federally registered
(it may not be used while the application is still pending), and
it may only be used in connection with the goods and/or services
covered by the registration. The symbols “TM” (for
trademark) or “SM” (for service mark) may be used with