If you use a word, term(s), combination of words, symbol, slogan, phrase, or even a shape of device, in connection with the sale of a good or service, you will be generally said to have “common law” trademark rights. What do those rights give you? Generally, those rights give you the ability exclude others from using the same or confusingly similar word, term(s), etc. in the geographic region in which you were selling said good or service. So why file a trademark application so the trademark can become “registered”? Many reasons, but first, a disclaimer and recommendation from The IP Law Firm.
Before even selecting a word, term(s), combination of words, etc. to be used in connection with the sale of a good or service, you should conduct a trademark clearance search. This is an all too critical first step that many individuals and business owners omit before landing on and using a trademark. Said another way, the trademark clearance search looks for any currently used, applied for, and/or registered word, term(s), combination of words, etc. that may not only prevent you from obtaining a registered trademark, but that may also be used to prevent your use to said term. Filing without searching can be a surefire way to get into trouble. It’s like driving with your eyes closed. You may not know about problems until the examiner in the United States Patent and Trademark Office (“USPTO”) cites a prior registration as an obstacle. Even if your application issues to registration, third parties still have another five years (and in some instances even more) to petition for cancellation based upon their priority. So it’s better to search and learn about potential blocking marks before deciding whether to spend the time and money to file an application. An initial screening search may be done at on the USPTO website. As many trademarks have thousands, if not tens or hundreds of thousands, in capital infused in their marketing and/or advertising, knowing whether you will be prevented from using said trademark is an essential first step to selecting any trademark.
Ok, so what are some of the benefits of filing for, and ultimately receiving, a Federal trademark registration? First, a federally registered trademark provides constructive notice to the public of the registrant’s claim of ownership of the mark. Second, a federally registered trademark provides a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration (quite different from a person’s “common law” trademark rights). Third, a federally registered trademark gives the registrant the ability to bring additional actions concerning the mark in federal court. Fourth, a federally registered trademark provides a basis to obtain registration in foreign countries. Fifth, a federally registered trademark provides a registrant the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods. Sixth, a federally registered trademark provides a registrant the ability to collect attorneys’ fees, treble damages, and counterfeiting statutory damages ranging anywhere from “not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just” (see 15 U.S.C. 1117).
Similarly, in the state of Florida (like many other states), trademark registration with the Florida Department of State provides registrants “shall be admissible in evidence as competent and sufficient proof of the registration of such mark in any action or judicial proceedings in any court of this state, and shall be prima facie evidence of the validity of the registration, registrant’s ownership of the mark, and of registrant’s exclusive right to use the mark in this state on or in connection with the goods or services specified in the certificate” (see Fla. Stat. 495.061(2)). Good stuff, huh? That not all, either. Trademark registration with the Department of State also provides:
Any owner of a mark registered under this chapter [the ability to] proceed by suit to enjoin the manufacture, use, display, or sale of any counterfeits or imitations thereof and any court of competent jurisdiction may grant injunctions to restrain such manufacture, use, display or sale as may be by the said court deemed just and reasonable, and may require the defendants to pay to such owner all profits derived from and/or all damages suffered by reason of such wrongful manufacture, use, display, or sale and to pay the costs of the action; and such court may also order that any such counterfeits or imitations in the possession or under the control of any defendant in such case be delivered to an officer of the court, or to the complainant, to be destroyed. In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court may also award reasonable attorney’s fees to the prevailing party according to the circumstances of the case.
There may be instances, however, when a person or entity should not file for a trademark registration. For example, as discussed above, the mark may already be in use or registered by another person. Moreover, the mark may be too descriptive or generic for registration. The mark may also be primarily merely a surname or subject to other prohibitions on registration. In general, however, we at The IP Law Firm highly recommend trademark registration so as to give you as much ammo as possible against potential infringers and/or competitors.
We at The IP Law Firm, an intellectual property law firm having offices in Fort Lauderdale, Plantation, and Tampa wish you much success in the trademarking process and are here to help register and/or enforce any trademark should it be desired.
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