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Trademark Home

You are here: Home Trademarks & Service Marks   Benefits of a Trademark

Benefits of a Federally Registered Trademark

by Richard Keyt

Eight Benefits of Federal Trademark Registration

Four Types of Trademarks

Principal Register vs. Supplemental Register

Eight Benefits of Federal Trademark Registration

A federally registered trademark can be a very valuable intellectual property asset.  If you currently produce or intend to produce a product, provide a service or operate a web site on the internet, and if you engage or will engage in interstate commerce, you should consider applying for and obtaining a federal trademark or service mark to identify the source of your goods or services.   

Marks that are registered on the U.S. Patent & Trademark Office's (USPTO) Principal Register have the following benefits:

1. Registration is constructive notice that the owner (registrant) of the mark has the right to use the mark throughout the entire United States, even if the mark is not being used in a specific geographical area.  15 U.S.C. § 1057(c) and 15 U.S.C. § 1072.  This means that the registrant can prevent a person or entity from using the same mark or a confusingly similar mark anywhere in the U.S. unless the other mark was used before the date of first use of the registered mark.

2. Registration is prima facie evidence that the registered mark is valid, the registrant owns the mark and has the exclusive right to use the mark in commerce.  15 U.S.C. § 1057(b).

3. Registration is prima facie evidence that the mark has been used continuously in commerce since the filing date of the application.  Rolley, Inc. v. Younghusband, 204 F.2d 209, 211 (9th Cir. 1953). 

4. After five years of continuous use in commerce, the mark becomes incontestable, which means that the registration of the mark cannot be attacked on the basis of prior use or descriptiveness.  15 U.S.C. §1065.

5. The registrant of the mark may sue for trademark infringement in federal court when diversity does not exist.  15 U.S.C. § 1121(a).

6. In a successful trademark infringement action, the registrant may obtain increased statutory damages.  15 U.S.C. § 1117 and 18 U.S.C. § 2320.

7. The registrant may use the power of the federal government (via the U.S. Customs Service) to prevent the importation of goods that contain infringing marks.  15 U.S.C. Section 1124.

8. Certain rights under the Paris Convention that assist overseas registration of the mark.  

The bundle of rights associated with a federally registered trademark gives the registrant considerable power.

Four Types of Trademarks

Trademarks are characterized as generic, descriptive, suggestive or arbitrary.  Only marks that are suggestive or arbitrary can be initially registered on the Principal Register.  

A generic mark is a common word used in connection with goods or services.  For example, "apple" is a generic mark that cannot be registered as a trademark to identify products that are apples.  Apple® when used to identify computer products, however, is a very strong arbitrary mark that can be registered on the Principal Register. Arbitrary or fanciful marks are preferred by trademark lawyers because they the strongest and easiest to register and defend.  A fanciful mark is a type of arbitrary mark that is made up such as Kodak® or Xerox®. 

A suggestive mark is a mark that suggests a quality about goods or services.  Halo® shampoo is a suggestive mark.  Suggestive marks may be registered on the Principal Register.

More often than not, people and businesses want to use a descriptive mark to identify their goods or services.  An example of a descriptive mark is "Joe's Bar & Grill" for a business that is a bar and grill.  The mark describes the services.  If a mark is too descriptive, the USPTO will refuse to register it on the Principal Register, but may allow it to be registered on the Supplemental Register.  A descriptive mark that has been registered on the Supplemental Register and used continuously for more than five years may be transferred to the Principal Register.

Principal Register vs. Supplemental Register

There is a substantial difference in terms of rights and benefits for marks registered on the Principal Register versus marks registered on the Supplemental Register.  Marks on the Supplemental Register only enjoy two of the eight benefits afforded marks on the Principal Register.  Marks on the Supplemental Register have the following benefits:

1. The Registrant may sue in federal court regardless of diversity.

2. Certain rights under the Paris Convention that assist overseas registration of the mark.  

Because of the difference in benefits between marks registered on the two USPTO registries, attorneys strongly recommend that clients adopt arbitrary (or fanciful) or suggestive trademarks and service marks.

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This page was last modified on December 12, 2009.

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