Is your business or product name protected against others who intentionally or unintentionally use the same name? Could someone register a website using that name and get away with it? Registering your trademarks has many advantages. Find out how you can benefit from registering yours.
Bruce Springsteen may be known as “The Boss,” but he is not The Boss when it comes to controlling his trademark as a domain name. The famous rock ‘n’ roll singer lost his www.brucespringsteen.com domain name arbitration dispute to a notorious cyber squatter partly because he had never registered his name as a trademark with the United States Patent and Trademark Office (“USPTO”).
If it can happen to Springsteen, it can happen to you. Here are seven reasons why you should become and remain The Boss of your trademarks by filing for federal registration.
(1) Valuable Asset. In today’s Internet economy, trademarks are a valuable asset for companies of any size and federally registering your trademarks with the United States Patent and Trademark Office (“USPTO”) grants you valuable national rights to the trademarks. Coca-Cola® is consistently ranked as one of the world’s most valuable trademarks with annual revenue generating capacity in the billions of dollars.
(2) Nationwide Priority. By registering your trademarks federally, you preserve the right to expand your business into geographic regions of the country where you have not previously conducted business. If you do not have a federal registration and you have only used your trademark in, for example, California and Nevada, another person that later files an application for registration of the same trademark — even after you had started use thereof — can prevent your use of the trademark in any other states other than California and Nevada.
(3) Tool Against Cyber Squatters. If a cyber squatter is infringing on your trademark by registering it as a domain name, federal registration of your trademark is one of the elements considered in legal proceedings to determine the rightful owner of the domain name. In addition, federal registration allows a hold to be placed on the domain name until the ownership dispute is determined through arbitration or by a court, thus preventing the erosion of the goodwill and value in your trademarks. In a matter handled by our office, because our client held federal trademark registrations, we were able to force a cyber squatter to relinquish an infringing domain name without incurring litigation expenses.
(4) Advantages in Court. Having a federally registered trademark provides the advantage of a legal presumption that you are the owner of the trademark, that the trademark is valid, and that you have the exclusive right to use the trademark nationally. The federal registration certificate provides a “stamp of approval” in the mind of a judge or jury that you are the rightful owner of the trademark. Furthermore, a federal registration provides the right to sue in federal court assuring oversight by judges that are more familiar with trademark matters than those in the state courts.
(5) Enhanced Remedies for Infringement. A federal registration provides notice and acts as a deterrent to potential infringers that you are the exclusive owner of the trademark. A federal registration allows for tripling of the actual damages suffered by the owner, plus attorneys’ fees if someone infringes on your trademark.
(6) Prevent Importation. A registered trademark may be filed with U.S. Customs Service to prevent importation and allows for seizure of infringing foreign goods.
(7) Incontestable Trademark. After five years of continuous use and registration on the principal register, certain grounds for cancellation of a registered trademark are foreclosed, thereby saving you tremendous litigation expenses. In another case handled by our office in which we represented the owner of an unregistered trademark that had been in use for over five years, the client was forced to expend litigation resources defending attacks on the validity of its trademark which would have been foreclosed by the five year registration.
The nominal costs involved in federally registering your trademarks are clearly outweighed by the significant financial and legal advantages afforded to you.
Disclaimer: The content on this page is for informational purposes only, and does not constitute legal, tax, or accounting advice. If you have specific questions about any of these topics, seek the counsel of a licensed professional.
Copyright, Milord Keshishian
Mr. Keshishian is an attorney focusing exclusively on intellectual property law and has extensive experience in all aspects of trademark, patent, copyright, trade secret, unfair competition and domain name law. Visit his website at www.milordlaw.com or email firstname.lastname@example.org.