Although unregistered trademarks receive some protection in different countries, trademarks can be further protected through registration. A trademark registration provides additional substantive and procedural rights.
Each trademark application must indicate goods or services for which the mark is used. They are grouped into so-called classes. The classification system includes 34 classes of goods and 11 classes of services. In addition, the application must identify the specific goods or services within the class on which the mark is used. The distinctiveness of a mark is measured based on this classification and description.
An applicant obtains a registration by filing an application with the Trademark Office in the respective jurisdiction.
Registration provides a number of benefits, including:
- it grants the right to use the registered trademark symbol: ®,
- it (also) grants the right to file a trademark infringement lawsuit in court and to obtain monetary remedies, including infringer’s profits, damages, costs, and, in some cases, treble damages and attorneys’ fees,
- it acts (in some countries) as a bar to the registration of another confusingly similar mark if the Trademark Office checks for similar marks, otherwise the owner of a similar mark must file an opposition, and
- it may serve as the basis for an international trademark application.
Registration provides additional benefits, including:
- a statutory presumption that
- the mark is valid,
- the registrant is the owner of the mark, and
- the registrant has the exclusive right to use the registered mark;
- the registration is proof that the mark has acquired secondary meaning;
- the registration serves as constructive notice of a claim of ownership, eliminating any justification or defense of good faith adoption and use made by a third party after the registration date;
- the registrant is entitled to nationwide priority based on the filing date; and
- the registration becomes incontestable in some countries after a specific period of time (US 5 years), creating conclusive evidence of the registrant’s exclusive right to use the mark, subject to certain statutory defenses.
There are different requirements for trademark registrations. While most countries have no requirement for actual prior use or the registration abroad the U.S. have for example five bases for federal registration: (1) actual use in commerce; (2) intent to use in commerce; (3) claim of priority based on a foreign application; (4) foreign registration; and (5) an extension of protection under the Madrid Protocol. The intent-to-use procedure gives the applicant the benefit of constructive-use priority based upon the application date, but an intent-to-use application cannot be registered on the Supplemental Register.
The Lanham Act defines commerce as any commerce that may lawfully be regulated by Congress, and it defines use in commerce as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” In most cases, use in commerce requires interstate use or use between the United States and a foreign country, and purely intrastate use generally will not qualify a mark for federal registration.
After a mark is registered, the ownermust protect the mark by properly using the mark and by monitoring use of the same or confusingly similar marks by others. To maintain the registration, the owner must periodically pay maintenances fees and in countries with use requirement like in the U.S. file declarations of continued use and renewal applications. In other countries use is required because after a grace period of 5 years (in the EU, Germany for example) a trademark can be canceled for no-use or deemed not registered if rights are based on it but no proof of use can be provided.