At Bouwen, we often apply for US registered trademarks for our UK clients doing business in the US. Although you may have rights under the common law even if you don’t have a registered trademark, there are 7 reasons why registration of your mark is the right move:
1. Nationwide exclusive use to the mark under certain circumstances. A registered trademark provides nationwide exclusive rights to use the mark in connection with the goods or services it covers, at least as to others who subsequently use the mark in a way that would cause confusion among consumers. Note that a registered trademark may not trump prior users of the mark, at least as to the geographic area in which that mark has been used.
2. Incontestability. After a registered trademark has been in use in commerce for 5 continuous years, it becomes eligible for “incontestability” status. Despite its name, incontestability merely creates a presumption that the trademark is valid and rightfully yours. The practical result is that the burden shifts to challengers to prove that the trademark is invalid.
3. Use of the ® symbol. A registered trademark permits you to use the ® symbol in connection with your goods or services. This symbol provides notice to potential infringers of your rights. But it also has become a symbol that enhances credibility with consumers. This can increase the value of your brand.
4. Domain name disputes. When an infringer uses a domain name that is identical or confusingly similar to your mark, you can file a complaint with an ICANN approved dispute resolution service provider to assert your rights. Having a registered trademark is a powerful tool for resolving such disputes in your favor. Victory in this process could result either in cancellation of the infringing domain name or its transfer to you.
5. Recordation with CBP. If you have a registered trademark, you can record that mark in the US Customs and Border Protection’s e-Recordation program. Recordation allows CBP to detain, seize, forfeit, and ultimately destroy merchandise entering the US bearing an infringing trademark.
6. Greater control over online listings. Having a registered trademark facilitates your participation in certain online marketplace brand registries, such as Amazon Brand Registry. Brand registry programs allow you to better protect your brand, control product listings, and block counterfeiters.
7. Enhanced legal remedies. Having a registered trademark often affords enhanced legal remedies against an infringer in the event of litigation.
Keep in mind that a UK registered trade mark offers no protection in the US. To enjoy US protection, you must separately apply for a trademark with the USPTO.