The Value of Trademark Registration
By Ted F. Gerdes.Esq.
Are you unsure about what to do when it comes to trademarks? Do you have
questions such as: what is a trademark, what is its value, does it need
to be registered and why should I make trademarks a priority? Read on
to learn the answers to these questions and basic information about
What is a trademark?
A trademark is a name or a “brand” that identifies a
particular product. For example, XEROX identifies a type of copying
product. A service mark is a name used to identify a service. FED EX
identifies a specific delivery service. The word trademark is often used
to mean both trademarks and service marks. A trademark registered with
the United States Patent and Trademark Office is identified by the ®
What is the value of a trademark?
Most of us in business have an intuitive sense that trademarks have
value. In the sale of a business trademarks and good will are one of
those nebulous line items accountants puzzle over. Quantifying this
value can sometimes be difficult, but, regardless of whether you can put
a precise number on it or not, trademarks do have value.
Let’s look at a company like Coca Cola. Most of the value of the
company is in the various Coca Cola brands and the formula. If the
company took their famous cola and sold it with a different name and
color on the label, sales would plummet. Consumers are trained to look
for that familiar name and the famous red label. It took decades of
advertising to achieve this iconic status, but no one can deny that this
mark has substantial value.
Does a trademark need to be registered?
In the United States, trademark and service mark rights are acquired by
actual use of the mark on particular goods or services. Registration
is not mandatory for use and ownership of a mark.
However, the significant benefits, discussed below added to the
relatively low cost of registration, make this an easy choice.
The Benefits of Registration
A Federal registration confers a number of benefits that easily outweigh
the relatively low cost such as:
Notice to the World of Your Ownership of the Mark.
A registration provides “constructive notice” of ownership. This
means the existence of a valid registration provides notice to the
world of your ownership of a mark-- even to a competitor who never
searches a mark prior to adopting and using it. An infringer cannot
use as a defense the fact that he was not aware of your registered
mark before he began using his mark.
Ownership is Presumed. A registration is
“prima facie” evidence of ownership of the mark. Prima Facie means
“on its face.” The information contained in your registration, is
presumed to be true unless disproved by credible evidence to the
contrary. This is extremely useful. If you have to enforce your
trademark rights through litigation you will not have to spend
precious court time proving that you own the mark. The court
presumes that fact based upon the registration. The defendant or
infringer will have to accept that or spend time and effort to prove
that you don’t own the mark.
Incontestability. After five years a
registration becomes incontestable to all but a few legal defenses.
Creators of new marks will avoid conflicting mark.
Competitors who perform a search will find your mark and make an
effort to avoid the use of the same or a similar mark.
Ability to Stop Infringers. Through the
filing of a trademark infringement suit you can request an
injunction against an infringer’s continued use of his mark, request
damages equal to the infringer’s profits and in appropriate
circumstances you can request treble damages and collect your
attorneys’ fees as damages. You can also ask the court to seize
goods bearing the infringing mark.
Ability to use U.S. Customs to Enforce Ownership.
The U.S. Customs Office will accept a registration as proof of
ownership and will police the importing of infringing goods.
Access to the Federal Courts. A registration
confers Federal Jurisdiction. This gives you the ability to sue an
infringer in any Federal Court throughout the country.
Foreign Registrations. A U.S. registration
can be used as the basis for registration in foreign countries.
Ability to use Registration Symbol. Once the
registration issues you can use the circled “R” as a warning to
others of your claim to exclusivity of the mark.
Do I need an attorney to register my trademark?
Anyone can file his or her own application. However, each applicant is
responsible for observing and complying with all the substantive and
procedural issues and requirements of the Trademark Office whether or
not he or she is represented by an attorney.
The registration process is not rocket science but it can be
complicated. It is not merely the filing of an application. There are
many decisions that must be made before starting the application, such
as, choosing a quality mark, determining the proper classification,
drafting the description of goods that define the product and choosing
acceptable samples. Once the application is filed the Trademark Examiner
typically has questions that must be adequately addressed. The modest
fees charged by attorneys are a bargain compared to the aggravation of
trying to respond to an examiner’s request.
What about online trademark registration services?
There are a number of registration services available on the internet
and elsewhere that will register you trademark for a relatively small
fee. Keep in mind these services are not normally provided by
attorneys and they do not provide legal advice. They do not evaluate
your mark or your answers. They merely fill out the application and
send it in. An experienced trademark attorney can often head off many
trademark office concerns by asking the right questions and compiling
the proper documentation.
You will be the one left to sort out the Trademark Office’s concerns or
objections, This can cost you time and may even require you to start
the process over. If you then have to hire an attorney to “clean up” a
mishandled application, it will often cost you more than it would have
had you gone to the attorney in the first place.
Protect your valuable marks
Whether you have just one product or service or hundreds of them,
investing time and money in the development and management of your
trademarks is a wise investment. The investment is relatively small
compared to the value you will create.
If you want to register a trademark or just have questions, feel free to
contact Ted Gerdes @ (310) 385-9501 or