The United States has a “dual” system of trademark law. Unlike many other countries, trademark rights in the United States are not obtained through registration alone, but rather, through use of the mark in commerce. A company may secure trademark protection under state law, usually under state common law, or it can seek federal rights under the federal trademark statute known as the Lanham Act, or both. The two are independent and a trademark holder may possess a valid and protectable trademark under state common law even though the owner has not taken any steps to secure federal rights.
Although federal registration of a mark is not mandatory, it has several advantages, including: prima facie presumption of the registration’s validity; constructive notice to the public of the registrant's claim of ownership of the mark; legal presumption of ownership nationwide; exclusive right to use the mark on or in connection with the goods and/or services listed in the registration; and recordation with the United States Customs Service, to prevent importation of infringing foreign goods. Perhaps most importantly, the owner of a federally registered trademark may, upon the filing of a lawsuit for trademark infringement, seek attorney’s fees, treble damages, in addition to injunctive relief and other legal remedies.
The importance of hiring the right attorney with experience in handling the trademark application process cannot be overstated. Once a trademark application is filed with the United States Patent and Trademark Office, it is assigned to a trademark examining attorney whose job is to scrutinize the application with the relevant legal guidelines for registrability. Throughout the application process there is normally a great deal of interaction which takes place between the examining attorney and the applicant. Often times the examining attorney will issue office actions denying registration of the proposed trademark upon the finding of procedural and substantive issues. Hiring the right attorney with experience in overcoming these office actions is essential to increasing the chances that your trademark application matures into a full registration and maximizing the value of the ultimate registration.
The professionals at Rick Ruz, PLLC are highly skilled and experience in helping companies and individuals secure and enforce their trademark rights. We work with companies to not only register marks, but also to help them in develop and craft overall protection strategies, including policing policies to detect possible infringements and the use of litigation or alternative dispute resolution when necessary to protect the marks.