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Roland Tong: Reasons to apply for a federal trademark

It's The Law

Posted: September 10, 2009 6:33 p.m.
Updated: September 11, 2009 4:55 a.m.

A trademark serves to indicate the source or origin of goods and services and to indicate the quality associated with those goods and services or goodwill.  

A trademark can take various forms such as letters, numbers, scent, sound, color, slogans, symbols and designs.  

Some notable trademarks include Coke, Kodak and Xerox.  

15 U.S.C. Section 1051 states that the owner of a trademark used or intended to be used in commerce may request registration of its trademark on the principal register.  

Achieving a federal trademark registration provides significant advantages:

n Valuation.  Federal trademark registrations are often considered assets for your company, just like your account receivables, office furnishings and equipment.

n Deterrence. A federal trademark registration notifies the world of exclusive rights to the mark in the United States.

n Ability to use the ® symbol.  The federal registered trademark symbol ® and the designations “Reg. U.S. Pat. And Tm. Off.” or “Registered United States Patent and Trademark Office” can only be used if the trademark is in fact federally registered. 

Unregistered trademarks and state-registered trademarks can only use the superscript TM.

n Presumption in litigation.  With a federally registered trademark comes presumptions of ownership and validity of the mark with the goods or services registered.

n National scope.  A state trademark registration may only allow a trademark owner to prevent others from using the same or similar mark in the state in which the mark is registered.  With a federal trademark registration, trademark rights are acquired nationally even though actually usage may only have been made in a smaller area.

n International trademark filings.  An owner of a federal trademark application or registration may use it to gain an advantage in obtaining foreign rights under a variety of conventions.

n Customs seizures.  A federally registered trademark can be recorded in United States Customs to support seizures at the ports of entry of counterfeit goods.

n Incontestability. Marks used for five years after registration in most circumstances can become incontestable which limits their vulnerability to a challenge by others.  This is true if,  five years after the registration, it can be established that there has been no final decision adverse to the registrant’s claim of ownership over the mark and that there is no pending proceeding involving the trademark rights.

A federal trademark registration on the Principal Register has a term of ten years, and may be renewed for additional ten-year periods.  It is automatically cancelled at the end of six years after the date of publication, unless the registration owner files an affidavit verifying that the mark is continued to be used in interstate commerce for the goods or services it is registered.

Roland Tong is a partner at the law firm of Lewis Brisbois Bisgaard & Smith LLP (  He can be reached by e-mail at His column represents his own views and not necessarily those of The Signal. “It’s The Law” appears Fridays and rotates between members of the Santa Clarita Valley Bar Association. This article is not intended to establish an attorney-client relationship or to constitute legal advice.


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