Trademarks

A trademark is a word, phrase, design, etc, that helps consumers identify the source of goods or services and distinguishes them from others goods or services. In that regard, a trademark, or service mark, is an important aspect of a business and can carry valuable goodwill.

Registering a trademark provides additional benefits under trademark law. Although a trademark being used commercially for goods or services may be entitled to trademark protection even it it has not been registered, registering the trademark carries significant advantages.
A business, or person, can apply for federal registration of a trademark with the US Patent & Trademark Office (“USPTO”). A mark must be in use (in commerce) in order to be registered, although one may file an ‘intent to use’ application for a mark not yet in use. An intent to use application may be allowed by the USPTO, but the mark will be registered only when the mark starts being used, and proof of its use is provided to the USPTO.

A trademark may be registered by the USPTO on the Principal Register or on the Supplemental register. The difference can be critical as far as your rights are concerned, you should speak to a trademark attorney for guidance for your particular trademark application.

A federally-registered trademark gives the owner priority nationwide over subsequent users. The registered status provides the trademark owner rights to use it throughout the country. Having such superior rights, the owner may be able to stop others from using the mark for similar goods or services in the U.S.

One little known benefit of registering a trademark is the benefit of incontestability. After 5 years of continuous use of the mark after registration, the trademark registration’s owner can apply for incontestable status. Such incontestable status is generally deemed conclusive evidence that:
a) the mark is valid;
b) the mark is registered;
c) the owner of the trademark registration owns the trademark; and
d) the owner has exclusive rights to use the mark for the registered goods or services.

This can be important because it can save the trademark owner significant time and expense during litigation by eliminating the necessity of establishing these facts.
For incontestability, the owner must file a Section 15 Declaration and apply for incontestability in the U.S. In Canada, however, there are no statutory filing requirements for incontestability. A trademark registration automatically becomes incontestable 5 years after its registration date.

The owner of a trademark registration may be entitled to attorney’s fees and costs for having to sue infringers. In the U.S., generally each party must bear its own legal costs. However, having a federally registered trademark helps overcome this general rule in American law. Additionally, if an owner of a registered trademark proves that the infringement was willful, he may be entitled to three times the amount of damages, or treble damages, against the infringer.