In addition to the pre-lawsuit advantages outlined yesterday, federal trademark registration has several advantages once you get into a lawsuit as well. The best thing about these in-suit advantages is that since your competitors know you have these benefits available to you, they are more likely to settle the matter before going to court and, more importantly, less likely to infringe your trademark in the first place.
In-suit advantages.
Access to Federal Court – Without a federal trademark registration, if your trademark infringer was out of state, you would either have to sue the infringer in their home state, or substantiate damages sufficient to obtain diversity jurisdiction. Even if most of your claims are state law claims, if you file in federal court based upon your federal trademark, you can have your state law claims heard in federal court as well.
Presumption of Validity – Without a federal trademark registration, to succeed against an infringer at trial, you will have to prove that your trademark has been validly acquired and has not been abandoned. A federal trademark registration serves as prima facia evidence that the trademark is valid. The infringer may, of course, overcome this presumption with additional evidence, but federal registration saves the time and expense of placing this burden on the infringer.
Presumption of Ownership – To succeed against an infringer at trial, you will have to prove that you actually own the trademark. Especially in situations where the trademark has changed hands, where the company name has changed or where there are subsidiaries using the trademark, proof of ownership can be a costly and time consuming process. A federal trademark registration serves as prima facia evidence of your ownership of the trademark. Again, the infringer may overcome this presumption with additional evidence, but with the federal registration, this initial burden is on the infringer.
Presumption of Exclusive Rights in Trademark –To succeed against an infringer at trial, you will also have to prove that you have exclusive rights to the trademark. In situations where there are others using the trademark in different locations or on different goods, or situations where there may be multiple infringers, it may be quite difficult to prove your exclusive right to the trademark without a federal trademark registration. A federal trademark registration serves as prima facia evidence of your exclusive rights in the trademark. While the infringer may overcome this presumption with additional evidence, the initial burden is on the infringer.
Presumed Not Abandoned – To succeed against an infringer at trial, you will have to prove that the trademark has not become abandoned. If the trademark has been in existence for a long time and/or there are not a large number of documented sales, proving continuous use sufficient to prove non-abandonment of the trademark can be very burdensome. A federal trademark registration serves as prima facia evidence the trademark has been in continuous use and has not become abandoned. Again, the infringer may overcome this presumption with additional evidence, but with the federal registration, this initial burden is on the infringer.
Incontestable – Within one year following a 5-year period of continuous use of the mark in commerce a federal trademark registrant may file what is referred to as a § 15 Declaration. Once this declaration is accepted, the trademark is “incontestable,” meaning the federal registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. While an infringer may still attack the registration on certain limited grounds, the infringer can no longer successfully argue the trademark is not inherently distinctive (e.g., is merely descriptive or misdescriptive, primarily geographically descriptive or misdescriptive, or primarily merely a surname) or that the trademark lacks secondary meaning.
As noted above the advantages of a federal trademark registration not only reduce the time and cost associated with trademark litigation, they may also reduce the likelihood you will ever have to sue an infringer in the first place. Tomorrow. The biggies. Advantages of federal trademark registration after trial.
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