Benefits of federal trademark registration (principal and supplemental registers)

Benefits of Federal Registration on the Principal Register

Trademarks may be federally registered on the principal register if they are distinctive, and otherwise qualify for federal registration. Here are some of the benefits of federal registration on the principal register:

1. A certificate of registration is prime facie evidence of (a) the validity of the registered mark and of the registration of the mark, (b) the registrant’s ownership of the mark, and (c) the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services.

3. Registration of the mark provides constructive notice of the registrant’s claim of ownership.

4. Right to use ®. This puts the world on notice of registration of your mark, and that you are a sophisticated trademark user. Also, no profits or damages may be recovered in a trademark infringement action unless the defendant had actual notice of the registration.

5. An infringement action may be brought in Federal court.

6. Right to injunction and have an infringer’s use of a conflicting mark immediately terminated.

7. Right to have counterfeit goods seized.

8. Entitled to recover profits, damages, and costs of the action. Plaintiff needs only to establish sales, defendant must establish deductions. Damages may be trebled by the court.

9. Court may order destruction of advertising materials and containers which include the infringing mark.

10. Infringing imported goods can be seized by customs.

11. Our experience is that users of conflicting marks are much more responsive and willing to resolve a conflict if the challenging trademark has been federally registered. This save significant cost and effort.

Benefits of Federal Registration on the Supplemental Register

Trademarks which are merely descriptive or otherwise not distinctive may not be registered on principal register, but they may in many cases, and if the mark is capable of becoming distinctive, be registered on the supplemental register. Here are a few of the benefits of registration on the supplemental register:

1. Right to use ®. This puts the world on notice of registration of your mark, and that you are a sophisticated trademark user. Also, no profits or damages may be recovered in a trademark infringement action unless the defendant had actual notice of the registration.

2. An infringement or unfair competition action may be filed in Federal court.

3. Entitled to recover profits, damages, and costs of the action. Plaintiff needs only to establish sales, defendant must establish deductions. Damages may be trebled by the court.

4. Court may order destruction of advertising materials and containers which include the infringing mark.

5. Applicant may seek registration on the principal register after mark has acquired secondary meaning.

6. Registration on the supplemental register does not constitute an admission that the mark has not acquired distinctiveness.

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