Recently, Amazon rolled out its revamped brand registry. This is a recent example of an online marketplace encouraging intellectual property owners to embrace the platform by taking steps to protect such owners’ rights. Amazon encourages participation in the brand registry by noting that those who enroll “can work together [with Amazon] to reduce potential intellectual property rights violations and promote an accurate representation of [their] brand on Amazon.” But at the moment, not all brands may be enrolled with Amazon. To be eligible, the mark must be a standard character mark, must be the subject of a registration, and must match the brand printed on products or packaging.
This illustrates one more benefit of federal trademark registration. Registration on the principal register of the U.S. Patent and Trademark Office accords mark owners the following benefits under federal statutes and regulations:
- Right to use the ® symbol to notify third parties the mark is federally registered;
- Right to claim certain advantages in seeking registration of the mark abroad under certain international treaties;
- Registration constitutes constructive use of the mark as of the date of the application and a right of nationwide priority against others (with certain exceptions) in connection with the goods and services identified in the registration;
- Right to record the mark with U.S. Customs & Border Protection to block importation of products/materials bearing infringing or counterfeit marks;
- Registration constitutes prima facie evidence of validity of the registered mark, of registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark with the goods and services set forth in the certificate;
- After the fifth anniversary of the registration date, the grounds for cancellation of the registration are limited;
In addition to the foregoing, there are some practical benefits to registration. To the extent a brand owner seeks to use enforcement tools made available by third parties or alternative dispute resolution proceedings, trademark registration may be necessary or desirable. In the case of some privately administered enforcement programs, like Amazon’s brand registry, registration may be a prerequisite.
Similarly, if a brand owner needs to enforce trademark rights against a cybersquatter through a Uniform Dispute Resolution Proceeding, registration of the mark is desirable because that evidence goes a long way towards proving one of the elements of the claim, namely, that the claimant owns rights in the mark. But if the claimant wants to enforce its rights through the Uniform Rapid Suspension system, registration of the mark is necessary (unless the mark has been validated through court proceedings or is the subject of specific protection under a statute or treaty).
Increasingly, federal trademark registration is not just something nice to have, but something necessary to allow a brand owner access to the full panoply of enforcement tools, especially online enforcement tools. If you have not yet registered your most important brands, consider consulting with a trademark attorney today.