One of the most common questions people ask trademark attorneys is:
Why should I apply for federal trademark registration — what benefits does it provide?
Well, there are actually lots of benefits, but there are four (4) principal benefits, which are relevant to most trademark owners:
- The Right to Use The Trademark Nationwide
- The Right to File For An Injunction
- The Right to File For Monetary Damages
- The Right to Prohibit Importation
Below is a brief discussion of each of these benefits.
1. The Right to Use The Trademark Nationwide
Because of the federal system here in the U.S., you can file one trademark application with the federal government and your trademark is protected in all 50 states, nationwide, without having to file an application in all 50 states.
By the way, owners of common law trademarks don't get this right.
What does this mean? It means that if someone else tries to use your trademark, or even one that is confusingly similar to your trademark, you have the right to stop them from doing so through the federal courts, which actually leads us to the next major benefit.
2. The Right to File For An Injunction
Most people don't know this, but the courts in the U.S. are both courts of law and courts of equity.
But what does that even mean and why is it important?
In a court of law, a plaintiff can file suit for monetary damages, which is discussed below.
In a court of equity, however, a plaintiff can file for an injunction to stop the defendant from doing something.
In the case of what's called trademark infringement, a trademark owner can file for an injunction to stop the other party from infringing upon the trademark, dead in its tracks.
I don't know about you, but that sounds like a pretty potent option if someone is infringing upon a trademark.
3. The Right to File For Monetary Damages
In addition to filing for an injunction to stop a party from infringing upon your federal trademark, you can also file a lawsuit for monetary damages that the other party has caused you by infringing upon your trademark.
In other words, if the party that is infringing upon your trademark has hurt your business, by decreasing sales, hurting your reputation, etc., you may be able to file a lawsuit to recover those damages from the infringing party.
4. The Right to Prohibit Importation
When you own a federally-registered trademark, you can file with U.S. customs to stop the importation of goods that are likely to be confused with your goods.
If you sell goods that can easily be "knocked-off" and manufactured in China, which is probably most goods, this right could be the most beneficial of all.
For example, if you have a valid trademark for a brand of purses and someone else manufactures similar purses in China and tries to sell them under your trademark or one that is confusingly similar, U.S. Customs will stop the importation of those purses before they even hit the market.
Sounds like a very useful remedy for many trademark owners.
As I mentioned above, this list of four (4) benefits is not in the least bit exhaustive, there are many others, such as: providing notice to potential trademark owners that your trademark is in use, indicating to the United States Patent and Trademark Office that another potentially infringing mark should not be registered if it is confusingly similar, etc.
This brief overview of some important considerations associated with federal trademarks is by no means comprehensive. Always seek the advice of a competent professional when making important financial and legal decisions.
Steve Cook is a trademark lawyer at Cook & Cook. Although his main office is located in Mesa, Arizona, he firm represents clients throughout the United States..
