Despite the silliness of Charlie Sheen’s endeavors to trademark his phases “Duh, winning” and “Rock Star from Mars,” protected trademarks is serious business. Registering trademarks is not mandatory, but it is advantageous in at least 9 ways.
Under 15 USC §1127, a trademark is defined as:
any word, name, symbol, or device, or any combination thereof—(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register… to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
Trademark rights exist in the absence of federal registration under federal law, state law, or common law. Federal registration, however, typically provides greater substantive and procedural rights than state registration or common law rights based on use alone.
The main benefits of federal registration include:
- Registration gives others constructive notice that the trademark’s owner has the right to use the mark (15 USC §§1057(c), 1072); this means the registrant can generally stop third parties from using the same mark or a confusingly similar mark anywhere in the U.S.
- Registration is prima facie evidence that the registered mark is valid; the registrant owns the mark and has the exclusive right to use the mark in commerce subject to any limitations set out in the certificate. 15 USC §1057(b).
- After 5 years of continuous use in commerce, the mark becomes incontestable, and the registration cannot be attacked based on another’s prior use or the mark’s descriptiveness. 15 USC §1065.
- The registrant of the mark may sue for trademark infringement in federal court. 15 USC §1121(a).
- In a successful trademark infringement action, the registrant may recover attorney fees and has the possibility of recovering treble damages if the infringement is found to be willful. 15 USC §1117.
- The registrant may file its U.S. trademark registration with the U.S. Customs Service to prevent importation of infringing foreign goods. 15 USC §1124.
- The registrant may use the ® symbol in connection with the mark, which may deter potential infringers. 15 USC §1111.
- Registration puts third parties on notice of the registrant’s claim of rights in the mark and may deter others from using it in connection with similar goods and services.
- Registration permits the registrant to take advantage of certain procedural benefits related to cybersquatting and domain name disputes.
For everything you want to know about trademarks, turn to CEB’s California Business Litigation, chap 6. Protection of intellectual property, including trademarks, is covered in CEB’s Financing and Protecting California Businesses, chap 12. The trademark registration procedure is covered in CEB’s Internet Law and Practice in California, chap 3.
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