In Part 2 we looked at the process for obtaining Federal registration of a mark. Today we conclude with some miscellaneous, but still important, issues in trademark registration.
The first is state registration. State registration is not as ‘strong’ as federal registration, mainly because there isn’t the kind of strong examination for conflicts with prior marks or abandoned or cancelled marks that there is via the USPTO examination. However, there is one good reason to obtain state trademark registration – the idea of putting others on notice. State registration is often very fast – a matter of weeks, instead of the six to twelve months of Federal registration. State registration does show up on the search reports mentioned in part 1 – thus it may head off trademark disputes pre-emptively. State registration does also establish some right to exclusivity within a geographic area (eg within the state or part of the state) although this right is arguably not that strong. Most applicants do state registration concurrently with a Federal one.
In this day and age of global markets and international trade, one should strongly consider whether one’s mark may be used abroad. It is advisable to think carefully about which foreign countries the product may be sold in, and file for international trademark protection. Many foreign countries, unlike the US, use a first-to-file system with no evidence of prior use required. Thus, acting quickly is paramount, to prevent a local user from perhaps “Trademark squatting” on your mark, especially if your product is successful in the US. Various treaties cover international Intellectual Property protection. For example there is a way to get protection in all EU member nations simultaneously. There is also a treaty called the Madrid Protocol which extends reciprocity of trademark protection to all 70+ nations that have signed it. For example if I decided to counterfeit the “Habanos” brand of Cuban cigar within the United States, assuming that the trade embargo on Cuban cigars gave me free reign to infringe the trademark, I would be wrong, and thus liable, under the Madrid Protocol, since both the United States and Cuba have signed it.
Benefits of Registration on the Principal Federal Register
Once a mark survives the USPTO and becomes registered, it receives a good deal of protection. Protection applies as against the entire nation, from the date of the trademark application. This date gives priority to, or defeats, any application made anywhere in the country at any later point in time. Non-federal protection (eg state or common-law) may impose severe limitations on protection, such as a limited geographic area where the mark is known and used.
After five years of use, a registered mark may achieve incontestable status. This status, highly desirable, increases the peril of infringers, as certain defenses to infringement are no longer available, and others, by law, become more limited.
Registration also enhances protection against counterfeiting. United States Customs may be used to block foreign goods bearing infringing marks from being brought into the country. There are always news reports of knockoff goods of high-end trademarked items being seized at Customs, although certainly plenty of knockoffs do enter the country. Anecdotally, one trademark attorney who has studied counterfeit Louis Vuitton handbags estimates that 90+% of these items seen in public are fake! According to her, the most common giveaway is that the two halves of the logo do not align correctly across a seam. The trademark holder of a Federally registered mark gets enhanced remedies against counterfeiters, and also enjoys certain advantages regarding evidence when at trial.