Protection and registration of trademarks and service marks

Trademarks are protected under federal law, state statutory law, and the common law. A trademark does not have to be registered in order to be protected. Although an application to register a trademark can be fi led before the trademark is actually used, protection of the trademark arises from a company’s use of a trademark. Trademarks not only benefit their owners, but benefit the public by allowing the public to distinguish and purchase a type of product from the particular source the customer intends. As a result, if sufficient use of a trademark has been made, it may be protected in the courts without a registration. Registration does, however, provide significant benefits for protection of trademarks.

A federal registration on the Principal Register creates a presumption that the owner is entitled to exclusive use of that mark on the registered goods, and therefore solves many proof problems in litigation. A federal registration establishes the owner’s rights in the trademark throughout the United States. Without a registration, common law trademark rights only arise in those geographic areas where sufficient use has been made of the trademark. A federal registration carries with it a right to sue in the federal courts, as well as the potential for recovery of profits, damages, costs, triple damages, and attorney’s fees. A registered trademark can be fi led with customs to stop infringing importations. After registration for five years, it is possible for the registration on the Principal Register to become incontestable and severely limit the grounds for attacking the validity of the registration.

States provide for registration of trademarks, but these state registrations do not have many of the benefits of a federal registration. Although not as preferred as a federal registration, there may be instances in which a federal registration cannot be pursued but a state registration is available.

The incorporation of a company with a state and the registration of the company name with the state as part of that incorporation process is not the same as a trademark registration. The incorporation under a particular name in a state and the various other methods of registering an assumed name with a state are for various reasons such as tax or notice purposes and provide little, if any, protection for a trademark. These types of filings provide little benefit in establishing rights to stop others from use of a company’s trademark or defend against claims by a competitor of trademark infringement. A common error of companies is the belief that once incorporated with the state under a given name; the company now owns that name and can both enforce it against competitors as well as be free of infringement claims. Although sufficient use of a company’s trade name can establish substantial common law trade rights, incorporation with a state alone does not generate trademark rights.

If you have questions about trademarks, contact our Michigan IP lawyers at (616) 975-5500.