Trademark Registration Can Benefit Organizations of Every Size (Part II)

by William W. Strehlow

Federal trademark registration comes with valuable benefits: a quick run-through of the business case for federal trademark registration.

When a trademark is successfully registered, it has the effect of putting the entire country on notice that the registrant claims ownership of the mark.[i] The legal effect of putting the public on “constructive notice” of ownership of the mark means that from the date the USPTO registers the mark, there can be no new “innocent” users—i.e., someone who uses the same trademark without knowing the mark is already in use in a different area—and, as a result, prevents anyone who infringes a registered trademark by using the same mark in the future from claiming ignorance as a defense.[ii] In addition, if your mark happens to be in use elsewhere—for example, by a small local or regional business in a different part of the country—the nationwide constructive notice of your ownership that comes with federal registration allows you to use the mark nationwide, while effectively preventing any un-registered prior users from expanding geographically.[iii] 

Federal trademark registration creates a rebuttable presumption of nationwide use of the mark.

Federal law provides that a registered trademark “confer[s] a right of priority, nationwide in effect” in connection with the goods or services specified in the registration. 15 U.S.C. § 1057(c). As a result, registration of a trademark with the USPTO “creates a presumption that the registrant is entitled to use the registered mark throughout the nation.”[iv] 

In practice, this means that a registered trademark owner may expand their use of the mark anywhere in the country and will enjoy priority over a similar mark for similar goods and services—even though the other mark was used in that territory first—so long as the registered mark was registered before the other mark was in use.[v] Put differently: registering a mark with the USPTO paves the way for an organization to grow with the confidence that it will generally be able to use its mark and prevent others from using it for the same goods or services throughout the country. As mentioned above, an exception exists where an unregistered mark was used in a territory before your mark is registered with the USPTO; in such a case, the earlier user has rights that are limited to that territory.

Federal trademark registration provides additional legal remedies in trademark infringement suits.

Federal law provides specific, and potentially quite valuable, remedies in infringement cases involving a registered trademark.[vi] The owner of a registered trademark that prevails in an infringement suit is entitled to recover: “(1) [the] defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.”[vii] In some cases, the owner of a registered mark that was infringed upon may be able to recover the cost of its attorneys’ fees.

If a registered trademark is infringed through counterfeiting, federal law provides for automatic attorneys’ fees for the infringed party along with damages equal to three times the infringer’s profits, or the trademark owner’s losses, whichever is greater.[viii] Whether the triple damages and general availability of attorneys’ fees are available because a registered trademark is infringed by counterfeits depends on factors that are beyond the scope of this article—attorneys’ fees and enhanced damages for counterfeit trademarks depends on specific definitions with their own legal tests. However, the fact that registering a trademark with the USPTO generally expands the availability of damages in trademark infringement cases is one among several reasons that many organizations may benefit from registering trademarks.

Federal trademark registration guarantees federal subject matter jurisdiction over infringement and other trademark claims.

Federal courts have jurisdiction over cases arising under any act of Congress relating to patents, copyrights, and trademarks,[ix] and the ability to litigate a dispute in a federal rather than state court can be beneficial in some cases. Because the USPTO and federal intellectual property registration programs exist through acts of Congress, any dispute involving a federally-registered trademark is eligible to be litigated in federal court.[x] 

Federal trademark registration allows the mark to be recorded with U.S. Customs and Border Protection to prevent goods that violate the mark from being imported.

For trademarks registered for use on tangible goods, U.S. law enforcement can stop counterfeit goods that copy or simulate the registered mark before they even enter the country. A trademark registered on the USPTO’s principal register is eligible to be recorded with U.S. Customs, which then may seize counterfeit goods during importation.[xi] 

Consider working with an attorney to protect your trademarks.

An attorney can be a valuable partner in helping your organization get the most out of its trademarks. Our practice regularly assists clients with trademark clearance advice, discussing protection strategies, and applying for registration with the USPTO.

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[i] 15 U.S.C. § 1072.

[ii] In re Int’l Flavors & Fragrances, Inc., 183 F.3d 1361, 1366 (Fed. Cir. 1999).

[iii] Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1123 (6th Cir. 1996).

This effect is famously illustrated in Burger King of Florida, Inc. v. Hoots, where the now internationally recognized fast food chain Burger King found that Gene and Betty Hoots were already operating a restaurant named “Burger King” in southern Illinois before the chain registered its trademark and expanded its reach there. Burger King of Fla., Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968). The growing fast-food chain sued to stop the mom-and-pop restaurant from using the “Burger King” trademark, ultimately resulting in a decision explaining: (a) that the Hoots family could continue to use their Burger King trademark in the town where their restaurant was located because they used the mark in that territory first; but (b) that by virtue of its federal trademark registration, the chain was entitled to use its mark everywhere but the town with the Hoots’ restaurant, and that the Hoots were restricted from using the mark anywhere else. Id. at 906–07.

[iv] Emergency One, Inc. v. Am. Fire Eagle Engine Co., Inc., 332 F.3d 264, 268–69 (4th Cir. 2003) (internal citation and quotation marks omitted).

[v] “Under the Lanham Act, the senior owner of a federal registration has superior priority over all junior users, but a court will enjoin the junior user only if the registrant is likely to enter, or has entered, the junior user’s trade territory. As a leading commentator has explained, ‘the registrant has a nationwide right, but the injunctive remedy does not ripen until the registrant shows a likelihood of entry into the disputed territory…. [The junior user’s] use of the mark can continue only so long as the federal registrant remains outside the market area.’” Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922, 931–32 (4th Cir. 1995).

[vi] 15 U.S.C. § 1117

[vii] 15 U.S.C. § 1117(a).

[viii] 15 U.S.C. § 1117(b).

[ix] 28 U.S.C. § 1338.

[x] See Hazel Bishop, Inc. v. Perfemme, Inc., 314 F.2d 399 (2d Cir. 1963).

[xi] U.S. Patent and Trademark Office, U.S. Customs and Border Protection Services for Trademark Owners, https://www.uspto.gov/trademarks/protect/customs-and-border-protection (last accessed Feb. 9, 2026).