The purpose of trademark registration
When you select a word, design, or slogan that identifies your goods or services, you yourself can check to see if it has already been registered using TESS, the U.S. Patent Office’s Trademark Electronic Search System. If you decide you want to move forward, we will perform additional searches to ensure there are no previously registered or conflicting registrations. Ideally, we consult with our clients regarding their preferred marks at the outset, prior to adoption of branding. Early consultation helps to prevent complications and expense involved in changing your business name or marks after you have invested time and capital in building them. Helping you approach your branding from the perspective of ensuring legal protection and trademark law compliance minimizes consumer confusion with your brand while at the same time avoiding legal complications for you. It is an important but technical process, and one that Henry Law can help you successfully navigate.
There are two kinds of trademark registrations – federal and state. Most people know of the trademark registration issued by the United States Patent and Trademark Office, known as a federal registration. This is the strongest form of trademark protection. A federal registration protects your trademark in all 50 states and is superior to any state registration. There are also state-level trademarks for businesses who only conduct business on a local level. These can be important for service providers who sell only in a limited geographic area with no plans for expansion. The determination of whether federal registration would be beneficial to your business is an area in which an attorney consultation may be helpful.
A federal trademark registration enables the owner of the registration to recover damages under the Lanham Act, 15 U.S.C. § 1117. In the case of a mark that is not registered on the Principal Register, those damages can include (1) defendant’s profits; (2) any damages sustained by the plaintiff; and (3) the costs of the action (including attorney’s fees only in “exceptional cases”). 15 U.S.C. § 1117(a). However, if the defendant intentionally infringes or counterfeits a mark, the Lanham Act triples those damages and applies a presumption that attorney’s fees will be awarded. 15 U.S.C. § 1117(b). The difference between an action under subsection (a) and the more valuable action for a willful infringement by counterfeit mark under subsection (b) is whether the trademark is registered on the Principal Register. See, the definition of “counterfeit mark” at 15 U.S.C. § 1116(d)(1)(B)(i).
A federal trademark registration may also help protect you from counterfeit goods and importation of knock-off products. Working with the U.S. Customs and Border Protection agency, a federal registration can help put a stop to large imports of knock-off goods.