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Trademarks vs. Trade Names

Acquiring Rights

Applicant

Advantages

Requirements

Searching

Expense

Prosecution of an Application

Basis of an Application

Required Information

Foreign Registration

Advantages of Trademark Registrations

There are at least eight significant advantages to registering a trademark:

1. A registered mark usually can be protected throughout all parts of the country of registration, whether or not it enjoys any local goodwill in any particular area. An unregistered mark can be protected only in those particular areas in which it enjoys an established goodwill or reputation. In some countries, no rights arise from the use of an unregistered mark.
   
2. The Examiner in the Trademarks Office in many countries (including the U.S. and Canada) will examine each new trademark application and may refuse registration to anyone who attempts to register a trademark that is the same as or confusing with a previously registered trademark. So if your mark is registered, the Examiner will cite your trademark registration against a new application filed by someone else for the same or confusing mark.
   
3. Many persons conduct searches in the Register of Trademarks before adopting and using new marks. It is therefore advantageous that a person's trademark be registered in order to alert anyone who might be contemplating adopting or using the same or a confusing mark to the possibility of conflict with the earlier registered mark, thus nipping in the bud potential problems that otherwise might surface years later with a consequent confrontation involving each of the parties in considerable nuisance and expense.
   
4. The licensing of a trademark is often facilitated by registration. Inappropriate licensing may damage or destroy the distinctiveness of the mark, rendering it unenforceable. The trademark owner must, via the licence, maintain control over the character and quality of goods and/or services sold or performed by any licensees under the trademark. Licensing presents a number of special problems; please consult us further if licensing (including franchising) of a trademark is planned.
   
5. Registered trademarks become in some respects incontestable five years after registration. No such benefit extends to unregistered marks. The incontestability rule can operate to the serious disadvantage of a person who does not diligently seek registration. Even if the owner of the unregistered mark was the first user, the later user, if first to register, may prevail if the mark has become incontestable.
   
6. A registered trademark may in many cases be protected by certain remedies; (for example, Section 22 of the Canadian Trade-marks Act prohibits the use of a registered mark by anyone else "in a manner likely to have the effect of depreciating the value of the goodwill attaching thereto"); this statutory protection is unavailable for an unregistered trademark.
   
7. A registered trademark enables the owner to take trademark infringement proceedings in court. Such infringement proceedings are unavailable for unregistered marks. In court, the owner of an unregistered trademark must prove that in the area in which the defendant carries on business, the owner's mark enjoys a reputation. The owner of a registered trademark has no such burden of proof in an infringement lawsuit.
   
8. A Canadian trademark registration for a trademark usually enables the owner to register the mark in one or more foreign countries, whereas registration in other countries may not be easy or possible if the mark is not registered in Canada. Filing a trademark application in Canada enables the owner to file in other countries with the benefit of the Canadian filing date provided that the foreign applications are filed within 6 months of the filing of the basic Canadian application.
   

Nothing here written constitutes legal advice. The accuracy of what is written is not guaranteed.   
Please consult us about any specific matter on which you require legal advice.    © Barrigar Intellectual Property Law 2001