The U.S. Supreme Court opens the door to the continued federal registration of REDSKINS as well as other marks thought to disparage others.
Up until recently, marks that disparaged others did not qualify for federal registration under § 2(a) of the Trademark Act. However, the Supreme Court in Matal v. Tam recently concluded that the prohibition against the registration of such marks amounts to viewpoint discrimination by the United States Patent and Trademark Office (USPTO) and, under the strict scrutiny review appropriate for government regulation of message or viewpoint, concluded that the disparagement proscription set forth in § 2(a) of the Trademark Act is unconstitutional. This conclusion was premised in part on the fact that the Trademark Act confers important legal rights and benefits on trademark owners who register their marks with the USPTO.
So, Should I Federally Register My Trademark?
Yes, although federal registration of a trademark is not required. Rights to a trademark in the United States are granted on a first come, first served basis. One obtains trademark rights by being the first in a given market either to use the mark or to file and successfully obtain a registration. Once it obtains such rights, the trademark owner is entitled to stop newcomers from using similar marks in ways that are likely to cause confusion.
You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several advantages, the most important being that federally registered trademarks are national in scope, regardless of the actual geographic use made of the mark. This national scope contrasts greatly with the limited geographic range of common law trademarks. Additional advantages of federal registration include:
- The right to use the ® symbol in connection with the mark, which may deter potential infringers;
- Increased ease of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration, which makes it easier to prove an allegation of trademark infringement; and
- The ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances.
- Filing for federal registration provides numerous benefits to a trademark owner at a reasonable expense. As a result, applications for federal registration are almost always recommended for marks that qualify.