This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a trademark law firm representing trademark applicants in pursuing trademark registrations throughout the world. Today, I will be answering the question: What are the benefits of a trademark registration with the USPTO, or United States Patent and Trademark Office?
The first benefit, and one of the best benefits, is that it provides constructive notice to the public of that particular registrant’s ownership in the mark. And the reason behind this is because the USPTO maintains a database that shows all of the trademark registrations and who the owners are. This database is searchable and allows someone that’s looking to register or use a mark to identify whether or not that mark has already been registered or applied for. So, that notice that is provided to anyone out there is something that is critical when it comes time to establish ownership of the mark and possibly establish a claim for trademark infringement.
The next benefit is that it provides multiple legal presumptions. Put another way, a legal presumption is something that a trademark owner wants in the event they need to pursue a trademark infringement lawsuit or other action against someone that is using a trademark without permission of the trademark owner. That legal presumption may include ownership of the mark and the exclusive right to use the mark throughout the nation. That’s particularly important because absent a federal trademark registration with the USPTO, one’s rights are limited to where they’ve actually used the trademark. So, for example, if they’ve only used it in Cleveland, Ohio, Columbus, Ohio and Cincinnati, Ohio, they cannot claim rights in, for example, Los Angeles, California or Tampa, Florida. However, if they have secured a trademark registration, they’re entitled to a legal presumption of nationwide rights in connection with the goods or services listed on the particular registration.
Another benefit is the ability to bring a lawsuit concerning that particular trademark in federal court. Absent a federal trademark registration, one may be limited to filing a lawsuit in state court. However, by having a federal trademark registration, not only can they file a lawsuit in a federal district court, but they may also be able to recover important benefits such as attorney’s fees for willful infringement, costs of filing the lawsuit, as well as statutory damages. And these statutory damages are not insignificant. For example, in the event of a cybersquatting action under the ACPA, statutory damages of up to $100,000 per cybersquatting incidence are available. Similarly, in the event of a willful infringement, there are minimum and maximum statutory damages with the maximum being up to $2 million dollars per willful infringement. What I like to say, is those types of benefits provide a big stick, so to speak, in the event that a trademark owner needs to try and enforce their rights. So, for example, if they were to send a cease and desist letter, and the recipient of that letter recognizes that they may be subject to large statutory damages, in all likelihood, they will probably cease or stop using the mark that you have complained of.
Another benefit is that a U.S. trademark registration can serve as the basis to obtain a registration in other countries. Since trademark rights are territorial, meaning they only pertain to the geographic location in which the application and registration have been obtained, it is important to file and secure trademark registration in other countries. A U.S. trademark registration can be used as priority and seniority to get those types of registrations in foreign countries, be it the European Union, Asian countries or elsewhere.
Finally, one of the most significant benefits from the consuming public’s standpoint of a trademark registration is the ability to use the registered ® symbol. While anyone claiming rights in a trademark can use the small tm symbol, which refers to a trademark, or the small sm symbol, which refers to a service mark, no one is permitted to use the registered ® with the circle around it symbol until they’ve secured a trademark registration with the United States Patent and Trademark Office.
So, to recap, you get multiple benefits by securing a trademark registration with the USPTO. The most important being the ability to provide notice to others of your rights in the mark by using the registered ® symbol, the legal presumptions, the ability to file a lawsuit in federal court, and the ability to recover statutory damages and other monetary penalties in the event that someone infringes upon your trademark.
I hope that answered the question, and once again, this has been Brian Hall answering your question: What are the benefits of a trademark registration with the USPTO?
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