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Trademark Basics: 2

Trademark Basics: 2

April 1, 2006
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" trademark registration can make an important difference in litigation "

In part one, we looked at the primary purpose of a trademark, along with some common examples. In this conclusion, we'll look at the benefits of trademarks and how to register them:

Benefits of Trademarks
There are a number of important benefits to registering your mark with the federal government, including:

  • Exclusive ownership of the mark across the entire country (except in any area in which someone was previously using the same or a confusingly similar name or logo);

  • Refusal by the USPTO to register potentially confusing marks in connection with goods or services that are identical or similar to the registered mark;

  • The right to use the symbol "®" in connection with your goods and services after registration has been granted;

  • After five years of continuous use after registration, a designation that your mark is "incontestable" (i.e., the mark may not be challenged on the grounds that it is "descriptive" or lacks required "secondary meaning");

  • Public notice of your registration to other users, notifying them of your superior rights to the mark; and

  • A U.S. trademark can be used as a basis for obtaining trademarks in foreign countries, something that is increasingly important in a wired world.

In addition, trademark registration can make an important difference in litigation. For instance, if you have a registered trademark, then you are presumed to be the legitimate owner.

The burden is on the other party to prove that you are not. In addition, a valid trademark registration may increase the likelihood that you will prevail in a dispute regarding an Internet domain name comprising the trademark or a confusingly similar variant.

Unlike common law marks, federal trademark registration also gives you nationwide rights to the mark instead of only where the mark has actually been used in commerce. Additionally, in the event of a trademark-infringement action, federal registration entitles the trademark owner to recover up to triple damages for infringement and attorney's fees.

Registering Trademarks
The process of registering a trademark is thoroughly described at the USPTO's website, and all of the forms and information also are available there.

In general, a trademark application requires that all of the following be submitted to the USPTO:

  • The name of the applicant;

  • A name and address for correspondence;

  • A clear representation of the mark;

  • A listing of the goods or services that are or will be identified by the mark; and,

  • The filing fee for at least one class of goods or services.

The most difficult part of the application is properly composing the required description of goods and services in each class, and properly providing appropriate specimens showing use of the mark.

Although specimens are not required at the time of filing the trademark application, they must eventually be provided to the USPTO. It is our practice, and we recommend, that specimens be provided at the time of filing.

It is important that the application fully and accurately discloses the goods and/or services associated with the mark because the identification of goods or services cannot be expanded after the application for the mark is filed.

With respect to specimens you provide to the USPTO, it is very important to remember that if you are mailing materials to the government for registration you should be sure that the works you send are fully compliant with all the laws pertaining to the works, including the federal labeling requirements pursuant to 18 U.S.C. §2257. In addition, you should also be sure that the specimens of use you provide to the USPTO are not offensive.

While the USPTO website allows you to file your own trademark registration application, the process can get complicated.

Consequently, the foregoing information is intended to only provide you with a general understanding of trademark registration procedures. It is not intended to be an exhaustive tutorial regarding all of the requirements pertaining to trademark registration.

Consequently, I strongly advise that you seek the advice of competent counsel, specifically an attorney experienced in trademark registration matters and preferably one that has registered marks for adult entertainment businesses.

Gregory A. Piccionelli, Esq. is a senior member of Piccionelli & Sarno, one of the world's most experienced law firms specializing in Internet and adult entertainment matters. He can be reached at (310) 553-3375.


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