1 00:00:06,200 --> 00:00:21,940 [Music] 2 00:00:24,960 --> 00:00:29,250 Hi there and welcome to the Trademark Information Network's Basic Facts Breakdown. 3 00:00:29,250 --> 00:00:30,750 I'm Mark Trademan. 4 00:00:30,750 --> 00:00:35,300 In this segment, we're going to discuss the benefits of federal trademark registration, 5 00:00:35,300 --> 00:00:38,440 essentially asking the question of whether it's worth it to go through the whole federal 6 00:00:38,440 --> 00:00:40,150 trademark registration process. 7 00:00:40,150 --> 00:00:44,690 We'll also talk about the little "R in the circle" symbol and when it's proper to use 8 00:00:44,690 --> 00:00:45,690 it. 9 00:00:45,690 --> 00:00:50,280 By the end of this video, you'll know why federal registration is so important and how 10 00:00:50,280 --> 00:00:52,560 to put people on notice that your mark is registered. 11 00:00:52,560 --> 00:00:53,560 Ready? 12 00:00:53,560 --> 00:00:55,030 Let's get started... 13 00:00:55,030 --> 00:01:00,170 The first question applicants often ask is: "Is federal registration of my mark required?" 14 00:01:00,170 --> 00:01:04,739 The quick answer is "No, but it will enhance your rights." 15 00:01:04,739 --> 00:01:09,229 Using your trademark, in commerce, with specific goods and services, establishes legal rights 16 00:01:09,229 --> 00:01:12,560 in the mark, known as "common-law" rights. 17 00:01:12,560 --> 00:01:15,100 Those common-law rights, however, may be limited. 18 00:01:15,100 --> 00:01:19,520 Depending on your situation, those rights might only cover a limited geographic area 19 00:01:19,520 --> 00:01:23,069 and it might be more difficult to enforce those rights than it would be if you have 20 00:01:23,069 --> 00:01:25,450 a federal registration. 21 00:01:25,450 --> 00:01:28,970 Federal registration, however, can greatly enhance those rights. 22 00:01:28,970 --> 00:01:33,180 Specifically, federal registration of your trademark on the Principal Register provides 23 00:01:33,180 --> 00:01:34,920 the following advantages: 24 00:01:34,920 --> 00:01:40,420 One, it gives you a legal presumption of the exclusive right to use your mark nationwide 25 00:01:40,420 --> 00:01:45,729 on or in connection with the goods and services identified in your registration. 26 00:01:45,729 --> 00:01:49,689 That's in contrast to a state trademark registration that only gives rights within the borders 27 00:01:49,689 --> 00:01:51,829 of that particular state. 28 00:01:51,829 --> 00:01:55,640 Federal registration will give you a presumption of rights throughout the United States and 29 00:01:55,640 --> 00:01:57,100 its territories. 30 00:01:57,100 --> 00:02:01,930 Two, it creates a legal presumption that you are the owner of the mark. 31 00:02:01,930 --> 00:02:06,960 That's a real advantage if you need to enforce your registration either in or out of court. 32 00:02:06,960 --> 00:02:11,760 However, be aware that even with that legal presumption of ownership, someone else could 33 00:02:11,760 --> 00:02:17,200 prove that they are the rightful owner because they started using the mark before you. 34 00:02:17,200 --> 00:02:21,660 This means a possibility exists that you might have to stop using your mark. 35 00:02:21,660 --> 00:02:26,160 Three, it puts the public on notice that you are the owner of the mark. 36 00:02:26,160 --> 00:02:30,480 If there's a question as to who owns the mark, it can be looked up in the USPTO's online 37 00:02:30,480 --> 00:02:31,920 database. 38 00:02:31,920 --> 00:02:33,549 And that's the fourth benefit. 39 00:02:33,549 --> 00:02:37,970 Being listed in the USPTO's database means that others considering potential marks can 40 00:02:37,970 --> 00:02:43,260 find your mark when they search the USPTO database to see if their mark is available. 41 00:02:43,260 --> 00:02:47,739 The existence of your mark in the database can help others to avoid selecting a mark 42 00:02:47,739 --> 00:02:49,590 that is too similar to yours. 43 00:02:49,590 --> 00:02:54,709 In addition, the USPTO relies on the same database for its own search and will find 44 00:02:54,709 --> 00:02:57,860 your mark when examining someone else's application. 45 00:02:57,860 --> 00:03:03,440 The USPTO will cite your registration against a confusingly similar mark in a later-filed 46 00:03:03,440 --> 00:03:06,940 application, preventing a potentially conflicting trademark from registering. 47 00:03:06,940 --> 00:03:12,830 But remember, the USPTO only searches the USPTO's database of pending and federally 48 00:03:12,830 --> 00:03:14,470 registered marks. 49 00:03:14,470 --> 00:03:17,300 It does not search for state registrations. 50 00:03:17,300 --> 00:03:20,959 And it also does not search for marks that are not federally registered. 51 00:03:20,959 --> 00:03:25,340 Owners of unregistered marks may have superior common-law rights. 52 00:03:25,340 --> 00:03:30,489 Five, a federal trademark registration gives you the ability to record your trademark with 53 00:03:30,489 --> 00:03:32,739 U.S. Customs and Border Protection. 54 00:03:32,739 --> 00:03:36,810 That agency will use your trademark registration to help prevent importation of infringing 55 00:03:36,810 --> 00:03:39,400 or counterfeit foreign goods. 56 00:03:39,400 --> 00:03:44,250 Six, you have the right to bring legal action concerning the registered mark in federal 57 00:03:44,250 --> 00:03:45,250 court. 58 00:03:45,250 --> 00:03:50,780 Keep in mind that the USPTO cannot enforce your trademark rights or bring legal action 59 00:03:50,780 --> 00:03:52,950 against an infringer. 60 00:03:52,950 --> 00:03:58,209 It is your legal responsibility to police your trademark and to protect it from infringement. 61 00:03:58,209 --> 00:04:03,530 Only you (or your attorney) may bring legal action against others infringing your mark. 62 00:04:03,530 --> 00:04:08,519 Seven, you have the ability to use your U.S. trademark registration as a basis for applying 63 00:04:08,519 --> 00:04:11,859 for a trademark registration in many foreign countries. 64 00:04:11,859 --> 00:04:15,190 It's a great benefit when your business takes off and you become a global phenomenon... 65 00:04:15,190 --> 00:04:21,850 And, eight, a federal trademark registration means that you have the right to use the coveted 66 00:04:21,850 --> 00:04:26,470 "R in the circle" symbol with your mark, something you cannot do unless your mark is federally 67 00:04:26,470 --> 00:04:28,400 registered. 68 00:04:28,400 --> 00:04:32,230 That symbol is typically placed on the right side of a mark and indicates that you have 69 00:04:32,230 --> 00:04:36,680 federally registered your trademark with the United States Patent and Trademark Office. 70 00:04:36,680 --> 00:04:40,400 It puts the public on notice that your mark is registered and that you have nationwide 71 00:04:40,400 --> 00:04:42,360 rights in it. 72 00:04:42,360 --> 00:04:47,120 Registration provides a lot of benefits and it probably explains why the USPTO has registered 73 00:04:47,120 --> 00:04:52,081 millions of trademarks from both domestic and foreign applicants over the years. 74 00:04:52,081 --> 00:04:56,550 For those applicants, the answer to the question "Should I register my mark?" was a resounding 75 00:04:56,550 --> 00:04:58,360 "Yes." 76 00:04:58,360 --> 00:05:02,790 As always, for more information about trademarks, feel free to explore the Trademarks section 77 00:05:02,790 --> 00:05:05,150 of the USPTO.GOV website. 78 00:05:05,150 --> 00:05:09,180 Along with other trademark related content, there is a link to the downloadable "Basic 79 00:05:09,180 --> 00:05:14,250 Facts About Trademarks" booklet, as well as links to the other Basic Facts Breakdown videos. 80 00:05:14,250 --> 00:05:16,930 Thanks for watching and see you next time. 81 00:05:16,930 --> 00:05:19,729 I'm Mark Trademan, Trademark Information Network.