Originally Posted 3/27/07
So last time we discussed common law trademarks so now its time to turn our attention to registered trademarks.
Q: if trademark rights aren’t created by registration, what does it mean to have a federally registered trademark?
A: The second broad class of trademarks is known as “registered trademarks.” Trademarks can be registered at the state or federal level. In general, the benefits of registering a trademark with a particular state will be confined to the state of registration. If a company solely does business in one state, this may be an attractive option. However, it should be noted that a state registration would not prevent someone from registering or using the trademark in a different state. For companies or individuals that are involved in interstate commerce (business between two or more states) federal registration may be available. Federal registration of trademarks provides certain advantages over common law trademarks. First and foremost, the protection has a nationwide scope regardless if you are selling in a defined geographic area or not. For example, if I am selling my goods in Colorado and Wyoming, I would be eligible for a federal trademark. If after I obtain a federally registered trademark and someone starts selling the same or similar goods using the same or similar trademark in Florida – I can prevent them from using the trademark and potentially sue for damages. This is true even if I am not selling my goods in Florida. This benefit is HUGE for small companies and startups. Secondly, a federally registered trademark carries certain presumptions. The first presumption is that the trademark rises to the level of a trademark. While a defendant can always challenge the presumption, the burden is placed on the defendant to show that the mark does not rise to the level of a trademark. Additionally, five years after the registration date, a federally registered trademark is eligible to become incontestable. This means that a defendant cannot challenge the presumption that the mark rises to the level of a trademark. The second presumption is that the registrant is entitled to use the trademark. Federally registered trademarks are also eligible for certain heightened damages including three times the defendant’s profits derived from using an infringing trademark for willful infringement and potentially attorney’s fees if the infringement is determined to be malicious.
