The Zen of Being ®: U.S. Trademark Registration Advantages from A to Z
By: Ira Cohen, Esquire, Partner, Henkel & Cohen, P.A., Miami
The brand designation, mark, or name of your Florida company can, and should, be your company's most valuable asset. How much can a brand be worth? Consider this: according to Interbrand's March 2011 Report, among the world's most valuable brands are the following: Coca-Cola ®, $70 Billion; IBM ®, $65 Billion; Microsoft ®, $61 Billion; Google ®, $44 Billion; and GE ®, $43 Billion.
As a Florida business owner, you are either making money or attempting to make money; you are either reaping profits or seeking to reap profits. Indeed, it is axiomatic that a critical function of a good old American, capitalist enterprise is the accumulation of greater wealth. A discrete subset of your Florida business wealth enhancement is the acquisition of property, whether real, personal, tangible, intangible, or otherwise.
To be sure, the overall value of your Florida business, in large measure, is the sum of the assets it secures and holds. Assets can be tangible, such as cash, realty, equipment, machinery, physical plant, or vehicles. Among other things, on the intangible side of the property spectrum, your company can amass its intellectual property portfolio, consisting of its brands, designations, logos, names, service marks, slogans, trademarks, and trade names.
If your Florida company owned, for example, a car, it would carefully select it (starting with the brand name), then, purchase it, apply for the title, register it, maintain and service it, keep it clean and shiny in public, insure it, and protect it against theft or vandalism, would it not? Of course, if your Florida company so decides, it can sell, transfer, or otherwise dispose of the car to a third party. If the car is exotic, eye-catching, head-turning and/or powerful, all the better.
In a similar vein, your Florida company's intellectual property assets need to be carefully selected, then, adopted, registered, maintained, and protected. If your Florida company is so disposed, a mark can be assigned, sold, or otherwise transferred to a third-party. Your company's mark's outward appearance (i.e., the company's reputation) needs to be kept squeaky clean in the public's perception. If your mark is exotic, eye-catching, head-turning, or powerful, all the better.
The "vehicle" by which your Florida company can protect its trademarks and service marks is by having your Trademark Attorney apply to the United States Patent and Trademark Office ("USPTO") for registration of your mark(s) on the Principal Register maintained by USPTO. There are, then, a panoply of advantages, benefits, justifications, and reasons for applying for a Federal trademark or service mark registration. Set forth below is a fairly comprehensive (sometimes overlapping) list of the considerations and advantages to convince your Florida company that it seriously ought to consider making appropriate application(s) to USPTO for Federal trademark and/or service mark registration(s). For ease of reference (and not denoting any particular degree of significance or rank order, owing to sequence), the following list is more or less alphabetical, so that we may casually refer to the list as the Zen of Being ® or, in the vernacular, U.S. Trademark Registration Advantages from A to Z.
- Additional income opportunities (e.g. licensing/franchise);
Application fees are modest.
Assets (intangible) of company are increased.
Attorney's Fees is an available statutory remedy for infringement.
Avoidance of legal disputes over rights with competitors and other third parties.
Avoidance of business headaches, in general.
Avoidance of conflicting third-party rights as concerns marks.
- Benefit of doubt is accorded to the registration owner.
Building your brand with your company's designs, logos, names, marks, and slogans.
Business identity protection afforded, in general, to your company.
- Cancellation grounds in USPTO inter partes proceedings are delimited.
Cease and desist letters can be more easily addressed.
Civil damages and criminal sanctions are available in federal courts.
Colors can be protected as marks.
Combat against cyber squatters is more effective.
Constructive notice to third parties of your company's mark(s) is afforded.
Customs enforcement is available to a registered owner of mark(s).
Court remedies are available to a registered owner of mark(s).
Confusing marks can be thwarted with greater ease and less cost.
Counterfeiters can be more easily and economically deterred.
- Damages for infringement are available in federal courts.
Decreased likelihood of infringing others where mark has been registered.
Destruction of counterfeit goods is an available judicial remedy.
Deterrence against knock-off goods is enhanced.
Differentiation from competitors and their goods and services is achieved.
Disgorgement of infringer's profits is an available judicial remedy.
Distinguishing the goods and services of your company becomes easier and cheaper.
Domain names owned by your company can better be protected.
Due diligence will reveal your mark(s) to third-parties through proper searches.
- Enhanced judicial damages for willful or malicious conduct by others.
Establishment of your company's trademark rights are based upon use.
Exclusive nationwide ownership of your company's mark(s) is gained.
Exclusive right to use your company's mark(s) in connection with certain goods or services is obtained.
- Foreign counterfeit goods are more easily stopped, seized, confiscated, or destroyed.
Foreign mark registration basis is established for your company with your mark(s).
Franchising options are created for your company.
- Goodwill is created for your company.
“Gravitas” is gained by registration of your company's mark(s).
Grounds for cancellation of your company's mark(s) at USPTO are severely proscribed.
- Hold mark(s) as company asset(s) (i.e., part of intangible intellectual property portfolio).
- Identical marks by your competitors or trademark pirates can be stopped.
Identification of your company's name in the marketplace is increased.
Improvement of your company's image is experienced.
Incontestable mark opportunity is created for your company's I/P portfolio.
Injunctive relief is available in federal courts as an infringement remedy.
Innocent infringement defense is eliminated after five (5) years.
Intellectual property portfolio of your company is enhanced.
Internet domain name protection is afforded to your company.
- Judicial preference for nationwide service and enforcement is typical.
Jurisdiction of federal courts can be invoked by your company.
Jury preference is to find in favor of the party/owner of registered mark(s).
- “Knock-off” goods can better be deterred, if not eliminated.
- Legal presumption of ownership, validity, and right to use mark nationally is gained.
Licensing opportunities are created so that your company can enhance its income.
Logo(s) of your company are better protected and enforced.
- Marketing and media tool for your company to utilize in commerce.
Madrid Protocol – International marks' registration basis is created.
Modest cost to your company as compared to maintenance of other assets.
Money saved for your company (e.g., stationery, printing).
Post-registration (maintenance) fees to USPTO are rather modest.
- Name can, and should, be your company's "MVA" (Most Valuable Asset).
Nationwide priority of your company's mark(s) is afforded.
Negotiation positions of your company are strengthened vis-à-vis third parties.
Nominal costs to register and maintain your company's mark(s) with USPTO.
Not a mandatory process; registration procedure is elective.
Notice (constructive) of trademark rights is disclosed to third parties.
- Official constructive notice, to the world, of your company's mark(s).
Option to expand use of your company's marks to other geographic areas.
- Permanent injunctive relief is an available judicial remedy in federal courts.
Prestige in your company's local, and industry-wide, commercial communities is witnessed.
Prevention of unauthorized imports harmful to your business is enhanced.
Prima facie evidence of ownership and the validity of your company's marks is
Principal USPTO Register's prestige is accorded to your company's marks.
Processing time, overall, is reasonable for USPTO mark applications.
Profit disgorgement by infringer(s) is an available judicial remedy.
Proof of Ownership is accorded to your company for its marks.
Property agglomeration for your company's portfolio is enhanced.
Public registration serves as a visible deterrent to third parties regarding marks.
- Quality of your company's image and reputation is enhanced.
- ® symbol serves as a clear and unequivocal warning notice to third parties.
Refusal of registration, by USPTO, to others with identical, similar, or confusing marks is assured.
Registration filing and processing fees are relatively modest at USPTO.
Registration symbol ® can be utilized lawfully only by mark registrant.
Remedies are enhanced in federal courts as against willful infringers.
Reputation protection is provided for your company.
Right to sue in federal court is afforded to your company.
- Sale of business opportunities is broadened (i.e., marks act as assurance to purchases).
Save for your company on commercial printing costs.
Scope of protection to your company's mark(s) is expanded.
Search fees, as part and parcel of pre-application due diligence, are modest.
Search reports will reveal mark(s) to third parties.
Seizure of counterfeit goods is an available judicial remedy.
Sale and purchase of mark(s) is treated like any other kind of property.
Slogans used by your company as marks can be protected and enforced.
Sophistication is shown by your company as to intellectual property issues and matters, in general.
Sounds and smells can, in appropriate cases, be protected as marks.
State law offers additional trademark protections to your company.
Statutory protections available to your company as a result of registration.
Stop infringers, pirates, and knock-off artists.
Suing in federal court is a right if your company has one or more registered mark(s) at issue.
Symbols and logos can be safeguarded and enforced by your company.
- Temporary injunctive relief is a judicially available remedy.
Term of registration of your company's mark(s) (i.e., 10 years) is renewable.
Territorial coverage (U.S. and U.S. Territories) for your company's mark(s) is granted.
Tool for marketing and public relations is fashioned for your company.
Trademark Attorney's fees are relatively modest.
Trademark search(es) should reveal your mark(s) to third parties.
Transfer of rights to and from your company are less complicated.
Treaty benefits are accorded to the owner(s) of registered mark(s).
Treble damages, for willful infringement, is an available judicial remedy.
- Upper hand is gained in ICANN (domain name) proceedings and enforcement.
U.S. protection is afforded, in all 50 States and in all U.S. Territories (e.g., USVI, Guam, Puerto Rico).
U.S. Coast Guard and Border Patrol enforcement is enhanced.
U.S. is a signatory to the Madrid Protocol concerning registered marks.
USPTO will not register similar, identical, or confusing marks to third parties.
- Validity of your company's mark(s) will legally be presumed.
Valuable asset(s) of your business will be created.
Valuation of your business will be enhanced.
Value increase in your company's net worth will result.
Visible deterrent to trademark infringers, knock-off artists, and pirates is generated.
- Willful/malicious infringers can be punished with an award of treble damages.
- Extraterritorial rights and registrations can be based on U.S. mark registration(s).
- Yield of a mark is concrete business, commercial, financial, and legal benefits for your company.
- Zealous protection and enforcement of your company's slogans, designs, logos, marks, and trade names is aided and facilitated by registered mark(s).
As may be observed from the foregoing list, the multiplicity of advantages to be gained from one or more Federally-registered marks simply are far too numerous, and significant, to overlook or pass up. In order to learn more about the Federal registration of your company's trademarks and/or service marks, please contact your Florida Trademark Attorney today.
About Henkel & Cohen
Henkel & Cohen, P.A. is a Miami, Florida boutique business litigation law firm whose partners hold the highest AV rating from Martindale-Hubbell®. For additional biographical and contact information, please visit the firm's website at www.miamibusinesslitigators.com.