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Federal Registration of a Trademark

18. What is Federal Registration of a Trademark (Lanham Act)?

Federal registration of a trademark is the process for filing for federal protection of a mark representing a business or commercial activity. The federal statutes governing the registration of trademarks are found in 15 USC, sections 1051-1127. This group of laws is known as the “Lanham Act”. The registration process is managed by the US Patent and Trademark Office, a federal administrative agency. The USPTO issues regulations and rules that govern the trademark registration and maintenance process. Federal courts addressing trademark law create law (“common law”) that also guides or controls the body of trademark law. The common law generally applies to disputes as to ownership and enforceability of trademark rights.

Federal Registration

Federal registration requires that a trademark application meet the aforementioned requirements and be used in “interstate commerce”. This generally means that the mark is used in a manner that is not solely limited to in-state activity. If a business is not currently using the mark in commerce, it may file an “intent-to-use” application along with a filing fee. This allows an 18-month period to begin using the mark in commerce. The filing requirement arises every 10 years following the initial filing. The holder will have to file an “affidavit of use” five years after the date of filing to certify that the mark is still in use. Unless a mark was previously used and abandoned, only the original user of a mark in interstate commerce may register the mark with the USPTO.

Benefits of Federal Registration

Federal registration affords the trademark user additional protections beyond the statutory and common law protections afforded under state law. Some of the major advantages of federal registration of a trademark are as follows:

•    Protection in every jurisdiction across the United States;

•    Creates a presumption that the registration is valid in the event of a dispute over trademark rights;

•    Provides notice to third-parties that the mark is in use;

•    Allows for a federal cause of action against an infringer (and there is a presumption of willful infringement);

•    Aids in the process of international registration; and

•    Allows for the mark to be registered with the US Border and Customs Administration to prevent the importation of counterfeit goods.

The benefits of federal registration are not exclusive. An individual with federal trademark rights may also secure state-law protections.

•    Discussion: How do you feel about the ability of a business to secure trademark rights all across the US? Should it matter that the business does not conduct business in all states? Why or why not? Are you convinced of the need for federal registration by the above-referenced benefits?

•    Practice Question: Karl is a small business owner with dreams of expanding his business across the country. He is seeking trademark rights for his business name. Can you explain in a memo the benefits of pursuing federal trademark registration?

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