The appeal of the Washington Redskins trademark case will be interesting to watch for many reasons. It is high-profile and receives a lot of media attention, and for good reason. It involves a claim of disparagement and a well known brand. The Appeal involves several other claims too, including the takings and due process clauses of the U.S. Constitution as well as violation of the First Amendment.
The Notice of Appeal, filed in the Eastern District of Virginia last month, has an excellent summary of the benefits of US trademark registration in summarizing what is at stake for the Redskins trademarks. Yes, without registration from the USPTO a trademark can still have common law rights. But the benefits of Federal registration are numerous and significant. But applying for registration is an excellent value for the cost (well, depending on how much and who you pay!).
Regardless of the merits of the appeal, the summary provided for “The Valuable Benefits of Federal Registration of the Redskins Marks” is excellent and applies to any registered marks. USPTO Registration on the principal register provides the registrant with:
- evidence of the trademark owner’s constructive use of its mark;
- nationwide priority from the filing date of the registration;
- prima facie evidence of the validity of the registered mark, registrant’s ownership of the mark, and registrant’s exclusive right to use the mark with the goods or services in the registration;
- the potential to recouping treble profits and damages and attorney’s if successful against a defendant infringer in a federal case;
- the right to use the ® symbol with provides notice to the public that the designation is being used as a trademark;
- listing in the USPTO’s publicly available TESS database of registered trademarks;
- US Customs Services assistance stopping the importation of any merchandise the copies the registered trademark without authorization;
- assistance in invoking domain name disputes;
- assistance in invoking social media username disputes; and more.
In short, a registration is a very valuable tool. It also creates a more tangible asset out of the trademark that can be licensed, used a security interest, or sold.
For the full appeal brief and the full list of benefits included therein, see post on the Trademark Blog.