Registering Your Brands - Top 10 Benefits
By Alan Cyrlin
Would you like to increase the value of your company's brands?
Through traditional advertising methods, you have already invested resources promoting your company and its brand names. There is an additional legal step you can take, however, to boost your brand's value and your company's prestige: register your brands with the U.S. Patent and Trademark Office in Washington, D.C.
Many businesses, as a matter of course, file federal trademark applications each time they roll out a new product, logo, slogan or name. For example, in 2006 the number of trademark applications filed with the U.S. Patent and Trademark Office reached a record 354,775. ("Performance and Accountability Report Fiscal Year 2006 Other Accompanying Information," U.S.P.T.O.).
If you run a business, you may already hold a treasure trove of trademarks eligible for federal trademark registration. The law defines a trademark as including "any word, name, symbol, or device or any combination thereof" used by any person "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." 15 U.S.C. §1127.
In lay terms, a trademark or service mark (similar to a trademark, but covering services instead of goods) is simply a business' brand. Examples of trademarks include the words Chevrolet, Microsoft and Ben & Jerry's. A mark may also be a slogan, such as American Express' Don't Leave Home Without It.. Logos -- such as the Nike "swoosh" design -- also qualify as a trademark. A mark can even be a distinctive sound (such as the roar of the Harley-Davidson motorcycle).
Below are the top 10 benefits of registering your trademark:
1. Nationwide Protection. How can you garner legal protection across the United States? In the U.S. you generally acquire rights by using the mark in commerce (e.g., sell products or services with the mark). However, these rights may be limited to those areas in which you were the FIRST to actually USE the mark and to those zones in which you would be expected to naturally expand. Therefore, if someone begins using "your" mark in a particular locality, they can claim that they own the mark (at least in that locality) and that you are the infringer. However, a federal registration is valuable because creates a legal presumption of ownership nationwide. Without a registration, your trademark rights may be limited to the geographic regions and goods/services in which you first used the trademark. More importantly, you can secure nationwide protection even before you actually use your mark. This is accomplished by filing an "intent to use" application. If the application is successful, you will have a priority date of the date of the application.
2. Company Asset. The registration becomes a valuable company asset. In fact, the single most valuable asset in the world is the COCA COLA registered trademark, estimated to be worth approximately $67 billion. ("The 100 Top Brands 2006, "Business Week and Interbrand Corp.).
3. Licensing.. The registration makes it easier to license your trademark - allowing you to receive royalties whenever your licensees use your brand.
4. Prestige. The registration gives you the right to use the registration symbol - adding prestige to your company and its poducts.
5. Immortality. Like a diamond, a registered mark can last forever so long as you continue to use it and renew it. Some of the oldest U.S. trademarks include "Samson" (first used in 1884 and registered in 1906) and the Bass bear symbol, a red triangle (first used in 1856 and registered in 1921). Thus, for a relatively small investment, you could own a registered trademark that could be literally immortal.
6. International Protection Potential. You can use your U.S. trademark registration to obtain trademark registrations in foreign countries.
7. Lawsuit Rights. The registration gives you the right to recover statutory damages against a trademark counterfeiter, which can be as much as $1 million per mark. Further, the registration creates a legal presumption that your mark is valid, that you are its owner, and you have the exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate of registration.
8. Incontestability. After five years of continuous use in commerce, your mark can become "incontestable." This means that the registration cannot be attacked because of prior use or descriptiveness. So, the sooner you register your trademark, the sooner you will enjoy this incontestable" status.
9. United States Customs Can Help. The registration gives U.S. Customs & Boarder Protection ("CBP"), a bureau of the Department of Homeland Security, the right to seize goods that infringe on your mark. Having Customs on your side can be a big help when you find that someone is importing products that infringe on your mark.
10. Certificate of Registration. After your mark is registered, you will receive an official Certificate of Registration. This impressive Certificate makes your "intangible" intellectual property more tangible. It also becomes helpful if you ever decide to sell your business because the certificate of registration shows that your business, in fact, owns the mark.
Applying for a federal registration does have some costs. It can be expensive, time-consuming, and the results are often uncertain. Therefore, it is advisable to obtain legal competent legal representation to help you make your decision.
Finally, this article is intended to present an overview and should not be construed as representing advice on specific, individual legal matters, but rather as general commentary on the subject discussed. The information may not apply to your specific situation. No attorney-client relationship is established by this article.
Alan I. Cyrlin, Esq. is a trademark attorney in Beverly Hills, California. To learn more, visit www.ecjlaw.com/bio/AlanCyrlin.asp.