Trademarks – Top 10 Questions
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Trademark Questions 7 - 9
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Question 7 – How Long Does Trademark Protection Last?

A trademark can last in perpetuity – i.e. forever. However, in practice, this depends on how the mark is used, protected, and maintained through the life of the mark. As mentioned in Question 4, a trademark is created under common law at the moment the mark enters commerce in association with the goods or services it represents. At that point, the mark could last in perpetuity under common law, as long as the trademark owner takes all the proper actions to use, protect, and maintain the mark.

If you file for and receive federal registration, you must also renew your mark with the USPTO on a regular basis. If you fail to properly renew your mark, you could lose your federal registration. For example, in general, the USPTO requires you file for renewals between the 5th and 6th year of the date of federal registration, between the 9th and 10th year of federal registration, and within every 10 years thereafter.

Question 8 – Can I Transfer My Trademark to Others?

Yes. You can freely transfer your trademark (or service mark) ownership to others in any way you choose. A key concept to understand in trademark law – just like any area of intellectual property law (i.e. including copyrights and patents) – is that the trademark owner owns the trademark like any other piece of personal property (e.g. a car, golf clubs, sunglasses, baseball cards, etc.)

As a trademark owner, you have the right to sell your trademark to others. In fact, trademarks are often very valuable assets of a business. When business are bought and sold trademarks often can play a pivotal role in the valuation of the business. Think of Coca-Cola. How much do you think the trademark of Coca-Cola is worth? Exactly – a whole lot! That’s why it is often very important to protect your trademark like any other valuable asset. Which means owners should usually seek the greatest protection for their trademarks and file for federal registration.

Question 9 – What Are the Benefits of Trademark Registration?

In the United States, there are two types of registration (i.e. filing with a government entity to put others on notice and gain more protections in your trademark) which include (i) federal registration and (ii) state registration. Federal registration occurs when the owner files for federal, i.e. national, protection with the United States Patent and Trademark Office (USPTO) in Washington D.C. State registration occurs when the trademark owner files for state registration in a particular state.

Federal registration affords the trademark owner the most rights and protections and applies protections of the mark across the Unites States and its territories. State registration affords the trademark owner less protections and only applies in the state where the registration is granted. So, the vast majority of trademark owners file for federal registration in lieu of (or in addition to) state registration.

So, what are the benefits of federal trademark registration? The following are the benefits, as listed by the USPTO, for federal trademark registration on the Principal Register (which is the register that lists all federal trademarks):
  • Public notice of your claim of ownership of the mark;
  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • The ability to bring an action concerning the mark in federal court;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol ®; and
  • Listing in the United States Patent and Trademark Office’s online databases.
Putting others on notice of your mark is one the strongest protections. Because you would likely be much more successful in protecting your mark down the road if someone else infringes upon your mark based on your federal registration.

In short, if you do not file for and receive federal registration of your trademark and someone else infringes on your mark (e.g. uses it improperly or uses a very similar mark that the public believes is your mark), you would have to prove – by law – when and how you actually used your mark in commerce. With federal registration you could more easily show the first date you used your mark, what it is used for, and many other attributes of your mark based on your federal trademark registration. Without federal trademark registration you would have to prove all of this through other means – which could become very costly and time consuming.

Next, we’ll go over trademark question 10.

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