You might wonder what the benefits of registering a trademark are, given that you can obtain common law rights in your protectable trademarks just by using those marks in interstate or foreign commerce.
One reason is that it’s possible to file an application to register a trademark before you’ve begun using the mark. If you later use the mark in commerce and obtain a registration, the date you filed the application will count as your date of first use, even though you didn’t actually use the mark until later.
To file an intent-to-use application, you need to state in that application that you have a bona fide (good faith) intent to use the mark. Once an application for registration has been filed, the application will be shown on the Patent and Trademark Office’s website.
Another reason to seek trademark registration is that it’s much easier to defend a federally registered mark against cybersquatters who might register domain names that are confusingly similar to your mark.
The Uniform Domain Name Dispute Resolution Policy (UDRP) provides a low-cost administrative method for resolving cybersquatting disputes. That is, it requires you to participate in an online arbitration if anybody claims they have a better right to a URL than you do. An online arbitrator is appointed to resolve the case.
To establish a cybersquatting claim under the UDRP, the trademark owner must show that the domain is confusingly similar to its trademark, that the domain-name registrant has registered and is using the domain name in bad faith, and that the registrant has no legitimate interest in the domain name.
While you can use the UDRP process even if your mark wasn’t registered with the USPTO before the cybersquatter registered its domains, it’s much more difficult – and usually significantly more expensive – to prove your rights in the mark without such a registration.
If your mark isn’t federally registered, you’ll have to prove secondary meaning, that is, that your mark is a distinctive identifier of your goods or services.
Factors the UDRP arbitrators consider in determining whether a mark has a secondary meaning include the length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.
Note that, in order to avoid having to prove secondary meaning, your mark has to be registered before the cybersquatter registered the domain. Further, if a cybersquatter registers a trademark in a country where use of the mark is not required for registration (as it is in the US) and the cybersquatter registers first, it may very well prevail in the arbitration.
For these reasons, it’s important to register your marks as soon as possible.
Additional benefits of registration include the fact that a federal registration is considered “prima facie” evidence of the validity of your mark and your exclusive right to use it with the goods or services covered by your registration. If there is any litigation involving the mark, the mark is presumed to be valid, and the other side would have to overcome this presumption.
Second, only federal registration allows you to use the ® symbol. Use of that symbol provides you with the presumption that the unauthorized user knowingly violated your trademark rights and makes it more likely you’ll recover damages and attorneys’ fees for the infringement.
Perhaps most important, a registered trademark that has been in continuous and unchallenged use for a period of five consecutive years may become incontestable. That is, you can secure rights superior to those of a prior but unregistered user if the original user doesn’t object to your registration within five years.
Please feel free to contact us if you have any questions about, or need assistance with, registering or enforcing your trademarks.
