Why Register Trademarks?

DEREK FAHEY, ESQ.

Businesses use trademarks and service marks to distinguish their goods and services, identify their source, and build brand recognition. Rights may arise through use even without registration, but federal registration provides several important advantages.

Nationwide Priority

A federal registration can give the owner superior rights throughout the United States against later users of the same or a confusingly similar mark. This can be especially important for businesses planning to expand beyond their current geographic market.

Potential Incontestability

After five years of continuous use, a registrant may be eligible to seek incontestable status. That status can eliminate or narrow several issues that would otherwise be disputed in infringement litigation.

Access to Federal Court

A federally registered mark gives the owner a direct basis for filing an infringement action in federal court. Without registration, establishing federal jurisdiction can be more complicated and expensive.

Customs Enforcement

A federal registration may be recorded with U.S. Customs and Border Protection. Customs can then help monitor for and seize imported merchandise bearing counterfeit marks.

Enhanced Monetary Remedies

In appropriate cases, registration may support enhanced damages and recovery of attorney fees. Although such awards are not routine, they can be significant in cases involving willful infringement.

International Priority

A United States registration can also serve as the basis for filings in other countries and may preserve the U.S. priority date under applicable international treaties.