What are the benefits of having a trademark on the USPTO's Principal Register?

First, there are two registers: the Principal Register and the Supplemental Register. Registration of a mark on the Principal Register conveys the important substantive rights that most people associate with federal registration and, as a result, it is the preferred method of federal trademark protection.

Probably the most important benefit of placing a mark on the Principal Register is that anybody who later initiates use of the same or a confusingly similar trademark may be presumed by the courts to be a "willful infringer" and therefore liable for large money damages.

Registration on the Supplemental Register does not convey the bundle of rights and protections granted on the Principal Register. For example, registration on the Supplemental Register is not evidence of the owner's exclusive right to use the mark in connection with the goods or services, and the owner of a mark on the Supplemental Register cannot utilize the power of the Customs services to stop importation of infringing goods.

How long does federal trademark registration last?

Once a trademark or service mark is placed on the U.S. Patent and Trademark Office's (USPTO's) Principal Register, the owner receives a certificate of registration good for an initial term of ten years. The registration may lapse before the ten-year period expires, however, unless the owner files a statement within six years of the registration date (called a Section 8 Affidavit) stating that the mark is still in use in commerce.

The original registration may be renewed indefinitely for additional ten-year periods if the owner files the required renewal applications (called a Section 9 Affidavit) with the USPTO. Failure to renew a registration does not void all rights to the mark, but if the owner fails to re-register, the special benefits of federal registration will be lost.

Can a business register its trademark at the state level?

Yes, if the trademark is used only within one state (and thus doesn't qualify for federal registration), state registration is a good idea. State registration, however, does not offer the same level of protection provided by federal law.

The main benefit of state registration is that it notifies anyone who checks the state's list that the mark is owned by the registrant. This fact will lead most would-be users of the same trademark to choose another one rather than risk a legal dispute with the registered mark's owner.

If the mark is also federally registered, a would-be user of the same trademark is presumed to know the trademark is federally registered, and state registration isn't necessary.