A trademark does not have to be registered. A person acquires a trademark, and the right to prevent others from using that mark or a confusingly similar mark, by simply being the first to use the mark in the marketplace to indicate the source of origin of a good or service.
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Benefits of Trademark Registration
However, there are benefits to registering a trademark. Registration of a trademark with the United States Patent and Trademark Office (“USPTO”) places your trademark in the U.S. Principal Service Mark Register. This gives constructive notice to the entire United States that this mark belongs to you. It is prima facie evidence of your exclusive right to use of the trademark. “Prima facie evidence” means proof of a fact, unless and until overcome by more compelling evidence. It is a presumption that the mark belongs to you. Essentially, registration gives you a let up from the start in proving a case against someone for infringement on your trademark.
This doesn’t mean that you can’t prove a case against someone for infringement on your trademark if your trademark isn’t registered, but registration is quite helpful.
A defense to trademark infringement is that the trademark is invalid. If the trademark is registered, the defendant must prove the trademark is invalid. If the trademark is unregistered, the plaintiff must prove the trademark is valid.
Registration Indicator and Recording with the Bureau of Customs
You will also want to use the registration symbol, an “R” with a circle around it, when you use your trademark, so that you give notice to others that your trademark is registered federally. You may record a registered trademark with the Bureau of Customs in order to protect against goods being imported with your mark, infringing on your trademark.
Affidavits of Incontestability
Filing an Affidavit of Incontestability when allowed by law will give further protection to your trademark. Rather than merely establishing prima facie evidence of your exclusive right to use the trademark, appropriately filing an Affidavit of Incontestability makes your exclusive right to use the trademark incontestable. Your exclusive right to use the trademark cannot be contested by anyone else by a claim that someone else used the mark prior to you or that the mark is merely descriptive.
In order to file an Affidavit of Incontestability you will file the Section 15 Affidavit of Incontestability. This form can be found on the USPTO website. You may only file this form if you have continuously used this trademark on some of the goods or services specified in the registration, in commerce, for five (5) consecutive years at any point after you registered the trademark. The Affidavit of Incontestability must be filed within one (1) year after the completion of the five (5) years of continued use of your trademark.
Your trademark also may not be involved in any litigation or proceeding involving your rights to use the trademark and there may not be any final decision negatively affecting your claim of exclusive right to use the trademark or registration of the trademark.
Maintaining Registration of a Federal Trademark
To maintain registration on a federal trademark, continued use is required. Evidence of continued use must be filed with the United States Patent and Trademark Office (“USPTO”) during the fifth (5th) year after your registration date, and every ten (10) years after your registration date.
In order to file evidence of continued use at these times, you will want to fill out the Section 8 Affidavit of Use. This form can be found on the USPTO website. You will state that your trademark is used in commerce, and information about any additional goods or services to which your mark is attached. You will also need to provide a sample of your current use of your trademark for each class of goods or services upon which you attach your trademark.