By Marc Whitfield
Partner, Taylor Porter
Registration of a trademark is not required. However, as discussed below, there are significant benefits that arise from registration of a trademark so it is generally very beneficial to register a trademark. For example, one significant limitation upon common law trademarks (unregistered trademarks) is that the owner’s trademark rights are generally limited to the specific territory in which the owner is offering, advertising and selling its goods or services.
A trademark owner can register his trademark locally within the State of his or her operations through the Secretary of State’s Office or the owner can elect to register the trademark federally through the United States Patent and Trademark Office (the “USPTO”), and thereby obtain nationwide registration and protection of the trademark.
If your sales, marketing and customer base is limited exclusively to a specific State, you could choose to register your mark only with that State’s Secretary of State Office. For example, you could register KIROLI MEAT PIES with the Secretary of State’s Office. Upon registration, the Secretary of State’s Office would generally refuse to permit a third party from registering KIROLI MEAT PIES, or any similar mark, within the same applicable class of goods or services under which you have previously registered. In most States, registration of the trademark is also generally required in order to pursue a claim under State law for trademark infringement.
Although federal registration of a mark is not mandatory, it has several advantages over non-registered marks and marks registered only with a State, which generally only provides limited legal rights and procedural benefits within the state of registration. A federal registration, on the other hand, provides nationwide protection and significantly more legal rights and procedural benefits, including notice to the public of the registrant’s claim of ownership to the mark, legal presumption of ownership nationwide, the right to use the federal registration symbol “®” and exclusive right to use the mark on or in connection with the goods/services listed in the registration. In addition, certain legal remedies and recoverable damages are only available to owners of registered marks. Since a federal registration provides nationwide exclusivity to the registered trademark, a federal registration will generally take at least six to seven months to complete, if everything goes well.
The USPTO will also refuse registration of certain types of marks. For example, the USPTO will generally not permit the registration of surnames; geographically descriptive marks (e.g. LOUISIANA EXPORTS); disparaging or offensive terms; foreign terms that translate into a descriptive or generic term (e.g., AGUA for water); a living individual’s name or likeness; the title of a single book and/or movie; and matter that is used in a purely ornamental manner. While some of these refusals are an absolute bar to registration, others may be overcome by extrinsic evidence under certain circumstances.
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