The failure to register copyrights and trademarks is the very definition of penny-wise and pound foolish. Many clients leave many law offices frustrated, particularly in copyright matters, because despite the apparent validity of their claims, they just cannot afford to enforce their rights if they neglected to register their creative works. The irony of this situation is that a great number of these clients are either individual creators, or companies whose very livelihood depends upon their intellectual property.
The government filing fee per class of goods or service for a federal trademark application is either $225, $275 or $325, depending upon applicant choice restrictions in goods/services identifications. With proper maintenance, a trademark registration can last forever. A copyright application is even cheaper. For as little as $35.00 per work, an author can file an online application, protecting his work for the duration of his life plus an additional 70 years. And for both copyrights and trademarks, there are significant benefits to encourage registration.
The failure to register a trademark, at either the federal or state level, is less detrimental than the lack of a copyright registration because trademarks can be protected based on national or state use. For use-based, so-called “common law” protection, the scope of the owner’s rights depends upon the extent of the use. However, as the Redskins will soon find out, it is easier to protect a registered, particularly a federally registered, trademark.
A mark may be federally registered on either the Principal or Supplemental Registers. Registration on either provides national protection, subject to preexisting uses. To be on the primary register — the Principal Register — a mark must, as of the date of registration, function as a trademark, service mark or collective mark, and otherwise qualify for registration. A trademark that is not inherently distinctive and has not yet acquired secondary meaning, but is still capable of distinguishing goods or services, may be placed on the Supplemental Register.
In addition to granting national protection, registration on either Register permits the trademark owner to use the ® or other symbols indicating federal registration; provides a federal district court forum for infringement suits and application of a more consistent body of national law rather than piecemeal application of various state laws; extends the scope of federal jurisdiction, permitting the joinder to trademark actions of some state law claims that would otherwise be restricted to state courts; and grants a potent arsenal of remedies, including access to the infringer’s profits, damages, and costs, and in certain circumstances, tripled damages and attorney’s fees.
Registration on the Principal Register also gives important evidentiary benefits in litigation that are otherwise difficult and expensive to establish. A registration grants prima facie proof of the validity of a mark, and of the registrant’s ownership of, and exclusive right to, its use. The registration also establishes that a mark has acquired secondary meaning, and provides constructive notice of ownership, eliminating any defense that a user adopted a mark and used it in good faith. For applications filed after November 16, 1989 and resulting in registrations, the owner is also entitled to the constructive use date of the application’s filing date. Finally, upon the filing of an appropriate affidavit or declaration of continuous use, a trademark may become incontestable after five years. Incontestability status provides conclusive evidence of a registrant’s exclusive right to use a mark, subject to certain statutory defenses.
Copyright and Trademark Registration
Although a copyright arises from the moment a work is created, the failure to register it is an all but insurmountable obstacle for most owners seeking to protect their rights in the creation. The United States eliminated many of its formal requirements for copyright ownership when in 1989 it joined the preeminent international copyright treaty, the Berne Convention, but registration remains a requirement for a domestic infringement suit. Simply put, a copyright owner of a U.S. origin work — which includes most works under the Copyright Act’s broad definition — cannot sue to enforce its rights before applying for a registration/registering the work; and if the owner does not register promptly, other important rights are lost.
As with a trademark, there are significant evidentiary and other benefits to encourage prompt registration. Registrations made before or within five years of first publication establish the prima facie validity of the copyright and of all the facts stated in the registration. After this time period, the evidentiary weight is left up to the discretion of the trial judge.
Most importantly, for all but the wealthiest copyright owners, it is just not cost-effective to bring a suit on an unregistered work. Without the essential remedies of statutory damages and attorney’s fees — which require the registration of unpublished works before publication, and published works within three months of first publication — few owners can afford to pursue even clear-cut violations.
The Act permits owners to be awarded up to $150,000.00 per infringed work, without even demonstrating the amount of their actual damages. Besides being difficult and expensive to quantify damages, it is often the case that even in egregious cases actual damages are difficult to prove, or they are, in fact, very limited. Being able to establish liability without having to make this difficult quantification is a tremendous advantage in enforcing an owner’s rights.
Likewise, attorney’s fees are a significant litigation expense, and the ability to recover these costs is a powerful bargaining tool against a recalcitrant infringer. With these expenses often rising into the hundreds of thousands of dollars, there is also little incentive to bring a suit without the opportunity to recoup these costs.
In short, even if there are significant up-front costs in applying for a large number of trademarks or copyrights, think of the expense as a wise long-term investment. And as the number of applications decreases, the case for registration becomes even stronger.