The #1 Reason to Register Your Trademark

There are many valuable benefits of registering one’s trademark with the United States Patent and Trademark Office (USPTO). A cursory Internet search will yield dozens of articles on the “Top 10” or “Top 5” reasons to register one’s mark. This short note, however, focuses on what I believe to be the #1 reason to register your trademark, namely, acquiring a Certificate of Registration on the Principal Register¹, which constitutes the following:

… prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration …. 15 U.S. Code § 1115.

I often describe the Certificate of Registration as an official document that answers, on a rebuttable basis, substantive questions that are central to any trademark dispute:

• What is the mark?
• Who owns the mark?
• What goods or services is the mark for?
• When did the trademark rights arise?

These questions arise not only in court but more often in pre-litigation skirmishes when parties send and reply to cease-and-desist letters. Nothing makes me happier than to attach to my cease-and-desist letter a copy of my client’s Certificate of Registration. A cease-and-desist letter might be effective, but a letter with a Certificate of Registration attached is palpably more persuasive, and if the registration is incontestable, it is virtually bulletproof when in a defensive posture.

One need not register a mark to own rights in a mark, of course. Trademark rights arise not by registration but by use. If I create a trademark for use with financial services, and I then display that mark in the course of promoting and providing financial services, I have thereby acquired rights in that trademark for use with financial services. Such rights are common law rights, i.e., rights that do not arise by statute or otherwise, or, as some frugal trademark owners prefer to call them, free rights with which one may use the free TM symbol. While free, the value afforded by common law rights is substantially less than the value afforded by registration, which is why most individuals and organizations register their marks with the USPTO.

Virtually all of the benefits summarized in “Top 10” or “Top 5” articles flow from ownership of a Certificate of Registration. Those benefits include:

Right to use ® Symbol: A registrant has the right to use the ® symbol and, by providing such actual notice of ownership, for the recovery of profits and damages not otherwise available. (15 U.S. Code § 1111)

Nationwide Rights: A registrant has the exclusive right to use its mark in commerce on or in connection with the goods or services specified in the registration throughout the United States and its territories. (15 U.S. Code § 1115)

International Registration: A U.S. Certificate of Registration may be the basis upon which to register your trademark outside of the United States under the Madrid Protocol, a convenient and efficient way for trademark owners in over 130 countries to file a single application to register a trademark in multiple countries (one may apply based on an application but that application must mature to a registration in order to maintain the International Registration). (15 U.S. Code § 1141)

Incontestability: With few exceptions, the right of the owner of a registered mark that has been in continuous use for five consecutive years subsequent to the date of registration is incontestable, which makes it virtually impossible for a third party to prove the registered mark infringes their mark based on the most common infringement claim, namely, the likelihood of confusion with another mark. (15 U.S. Code § 1065)

Constructive Notice: Registration on the Principal Register is constructive notice of the registrant’s claim of ownership and gives rise to the legal presumption that someone should have known about the registered trademark, even if they didn’t, relieving the trademark owner of the burden of proving actual awareness in infringement cases. (15 U.S. Code § 1072)

Federal Jurisdiction: U.S. federal courts have jurisdiction over all actions arising under the Trademark Act, without regard to the amount in controversy or to diversity or lack of diversity of the citizenship of the parties. (15 U.S. Code § 1121)

Damages, Profits, Costs: When a violation of any right of the registrant of a mark registered in the USPTO has been established in civil action, the plaintiff shall be entitled, subject to certain provisions, to recover (1) the defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. (U.S. Code 1117)

U.S. Customs and Border Protection: A trademark registrant may record its registration with U.S. Customs and Border Protection to aid in preventing the importation of products bearing an infringing mark. (15 U.S. Code § 1124)

A client once advised me that a trademark Certificate of Registration is not worth the paper it is written on. He learned the value of registering a trademark the hard way, incurring tens of thousands of dollars in costs to defend the company’s rights in a trademark dispute that would have settled early and cost perhaps a few thousand dollars had the mark been registered.

Happily, though, when the company was acquired some years later, General Counsel had by then registered the company’s flagship mark. The acquirer found this particularly valuable, given that a new competitor was infringing the mark and deserving of a cease-and-desist letter – to which was attached the incontestable Certificate of Registration.

1. The Principal Register is available for words and phrases that are neither generic nor merely descriptive of the goods or services with which they are used, the latter absent a showing that the word or phrase at issue has acquired secondary meaning as a mark based on extensive and continuous use for at least five years. Merely descriptive marks may be eligible for the Supplemental Register. Some of the rights described in this article are available to marks on the Supplemental Register, but not all of those rights, including the most important one of all, exclusivity.