Federal Trademark Registration

An important, and oftentimes the MOST important asset of an online business is its domain name. It is of vital importance, as discussed in a previous article that you assure that this name does not infringe upon the rights of other parties. Of equal importance is taking the necessary steps to protect your name against use by others.

IMPORTANCE OF FILING A REGISTRATION

Trademark rights arise upon use. It is not necessary to file a state or federal trademark registration in order to claim infringement. In the United States, proprietary names can gain common law protection and this protection is available even without having a registration filed.

Filing a federal trademark application does have some very distinct advantages however and it is recommended that anyone who is serious about protecting their name from use by others file state and federal trademark applications. As a practical matter, if you determine that another party is utilizing your name, it is much easier to get them to stop if you have a federal registration in hand. Without this registration, this type of dispute often requires you to demonstrate to the allegedly infringing party that you have rights to the name before they will even consider stopping their use.

These types of disputes can also get into the "who used the name first" dispute and your letter to them directing them to stop using the name can turn back on you and result in you deciding that it is a risky proposition to continue using the name. Additionally, the remedies available under federal law give you a stronger hammer to use against an alleged infringer. If that party wishes to argue about your rights to the name and they turn out to be wrong, and if they continue to use the name during the interim, this can be strong evidence of willful infringement that can give you punitive damages and attorney fee awards.

ADVANTAGES OF REGISTERING YOUR TRADEMARK

Access to Federal Courts. Generally, unless federal trademark registration has been secured, you will be limited to suing in state court under common law theories of recovery. Presumption of ownership and validity of the trademark. If you have a filed and received registration of your trademark, you are presumed to be the owner of the mark. That is not to say that you are absolutely the owner. However, any party challenging your ownership will have a strong presumption of ownership to overcome. If you have not filed an application and received registration, no such presumption will attach and you will need to fully establish your trademark rights with the burden of proof being on you.

Federal Remedies. Without a registration, you will be limited to the damages for infringement that you can actually prove. Federal law provides additional remedies such as the possibility of obtaining punitive damages and attorney fees against willful infringers. As a practical matter, the possibility of these types of damage give you a much stronger "hammer" to get infringers to cease from using your mark. If they continue to use your after warning, the potential consequences are very high.

Foreign Piggyback Rights. Your federal registration can sometimes be piggybacked on foreign rights. In other words, in some foreign countries the procedures for obtaining registration are simpler if a US registration has been received. Additionally, a federal trademark can be recorded with the United States Customs Service, which can assist in preventing the importing of goods that may violate your rights.

InterNIC Rights. If you do not have your domain name but do have a federal trademark, you will have more strength with the InterNIC if a third party secures a domain name that infringes upon your federal trademark. Generally, InterNIC policies and federal case law arising therefrom are abhorrent to domain name pirates.

STEPS INVOLVED IN FILING A REGISTRATION

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