Why Register a Trademark in The U.S.?

At the Law Offices of Nikki Siesel PLLC, we offer years of experience to individuals and businesses internationally and across the U.S., while also servicing clients in Westchester County, Fairfield County and the surrounding communities in New York and Connecticut. We handle a broad range of intellectual property matters, from trademark registration, copyrights, domain name disputes and licensing issues.

We conduct our practice with a commitment to personal service, treating every client as if they are our only client, and devoting all our energy and resources to each case. We will also provide prompt, thorough and thoughtful answers to all your questions.

To set up a free consultation, contact our office or call us at 914-949-9550.

By registering your trademark at the United States Patent and Trademark Office, you obtain a nationwide priority of use of the Mark in conjunction with your goods or services. If you do not register your trademark, you may be severely restricting your trademark rights to a narrow geographic area that may prevent you from expanding your business to another location.

You can file a federal court action regardless of diversity. Your evidentiary advantages will include your trademark registration being prima facie evidence of your ownership of the Mark, your continued use of the Mark since the filing of the trademark application, of the validity of the registration, and of your exclusive nationwide right to utilize the Mark in connection with the goods and services identified in the application. The federal courts can assist you with issuing an injunctive order that mandates that the infringement must cease. If you can prove actual confusion and unjust enrichment, counterfeit sale or willful infringement, then you may be entitled to disgorgement of the infringer’s profits, money damages, attorney fees, and costs.

Registration increases the value of the Mark as a business asset. Once registered, you will have the option to enter into license agreements or to assign either a portion of the trademark classes or all of the trademark classes for valuable consideration. Your business will suffer in value should you fail to register your Mark. You will limit your business opportunities and risk not being able to expand your business into desirable geographic areas.

Registration of your trademark will have a deterrent effect on competitors seeking to use similar Marks, due to the public database of the USPTO. As soon as you file the trademark application, it is uploaded into a public database. Almost all applicants will conduct a search in TESS (Trademark Electronic Search System) located @ www.uspto.gov. This will apprise third parties of your trademark rights and will deter competitors from infringing your legal rights. Based on the constructive notice provided by the registration, third parties cannot claim ignorance of your trademark rights.

Once you register your trademark you gain the right to use ® or "Registered Trademark" wording in conjunction with your Mark.

If you register your trademark and continue to use the registered Mark for five consecutive years, you can file an Affidavit of Incontestability. Essentially, your trademark rights become incontestable. If you have to litigate a dispute in court, nearly every defense to trademark infringement would be eliminated.

A trademark registration is useful evidence should you find yourself involved in a domain name dispute. It is difficult and expensive to prove trademark rights without a registration. If you have common law rights (unregistered rights) you must demonstrate these rights through business records, including sales, advertising, and promotional records and materials. Often the point of contention is the date of first use of the trademark in commerce. Without a trademark registration, documenting this fact is challenging. Moreover, there are other types of trademark infringement that occur on the Internet. Should you need to make a complaint with ICANN (Internet Corporation for Assigned Names and Numbers) or with a search engine, you will have to prove you have trademark rights and the most efficient way to do this is to provide evidence of your Trademark Certificate of Registration.

Trademarks rights in the U.S. are based on use and registration. Therefore, by registering your Mark you may restrict the use of a similarly confusing Mark to a specific geographic area, as of the date of your trademark registration. This restriction will apply even to those trademark owners possessing senior common law rights.

You can use your U.S. registration as a basis to obtain registration(s) in foreign countries.

You can file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

To set up a free consultation, send us an e-mail or call our office at 914-949-9550. Our lawyers represent individuals and businesses in New York, Connecticut and across the nation.