If trademarks are ultimately enforced by who used it first and not who registered it first then what is the real point of registering?

Question

From all that I've read, trademark disputes are ultimately decided by which entity was the first to use the trademark and not which entity was the first to register it. The word "use" can be interpreted in a number of ways but that's tangential to this question anyway so I will ignore it. Therefore, if this is indeed the case, that trademarks are enforced by a first-to-use rule, then what is the real point of registering? Isn't it, in the most practical sense, just a legal formality that businesses take mostly because lawyers have convinced them they must? Because in terms of actual legal protection, an approved trademark itself doesn't guarantee any real immunity if someone else started using it first and can prove it in a courtroom.

Answer 1

Under united-states law there are several advantages to registration. In some countries there is no protection without registration.

Short Answer

A principal register trademark makes it much easier to prove one's infringement case in court and can conclusively prove some points in one's infringement case after five years if the mark is declared incontestable.

Lesser levels of trademark protection above a mere common law trademark primarily provide third-party evidence of latest possible date of first use and eliminates the need to prove geographic scope within the relevant jurisdiction from the date of filing.

Long Answer

There are about four levels of trademark protection.

A common law trademark protects you in the geographic area and economic market where the mark has acquired a secondary meaning, and the existence and scope of the mark, the time that it was established, and it priority in time over the alleged infringer must be established by proof at trial, with the burden of proof completely on the alleged mark holder. The validity of the mark as something that can be trademarked must also be established as a matter of law.

A state trademark registration provides a presumption that the registered mark was used in the geographic area of the entire state in the market categories claimed from not later than the date of filing. Other elements of a common law trademark factually, including the existence of a secondary meaning, and its legal validity must still be established as a matter of law.

A secondary register federal trademark is basically the same in effect as a state trademark registration but without national geographic application, rather than state geographic application.

Basically, these first three are slight variations on a theme that don't prove a whole lot, but some sort of registration still proves something that might otherwise be hard to prove at an infringement trial.

A principal register federal trademark carried with it a presumption of use in a geographic area that is national in the claimed category, a date of first use in interstate commerce stated, a presumption of priority over all infringing marks, a presumption of legal validity (i.e. it is the kind of mark that can be trademarked), and a presumption that it has a secondary meaning. Essentially, a principal register federal trademark under the Lanham Act pre-proves all elements of the the prima facie case of infringement except damages, the conflict between the infringing mark and the principal register mark, and the facts related to use of the infringing mark.

The presumption basically means that principal register trademark holder, once the other side files an answer to the complaint or fails to do so on time, can usually walk into court with a single public record proving registration, and a very brief affidavit regarding the nature of the allegedly infringing mark and its use (perhaps supported by photographs from shop shelves or online store webpages where the infringing goods are sold) and win default judgment on liability (if no answer is filed) or partial summary judgment on liability if the side can present an affidavit contradicting the facts that are presumed.

Moreover, after five years of continuous use of a principal register trademark the mark becomes "incontestable" if a declaration of incontestability is filed pursuant to 15 USC § 1065 which states that:

• No final legal decision has issued against the mark.
• No challenge to the mark is pending.
• A Section 15 Declaration describing the mark's use was filed on a timely basis, and
• The mark is not and has not become generic.

If the plaintiff can establish that the mark is incontestable, the mark will be presumed valid unless the defendant can establish one or more of the following:

• The registration or the incontestable right to use the mark was obtained by fraud.
• The registrant has abandoned the mark.
• The mark is used to misrepresent the source of its goods or services (for instance, use of the mark involves palming off).
• The infringing mark is an individual's name used in his or her own business, or is otherwise prohibited or reserved under the Lanham Act.
• The infringing mark was used in commerce first—before the incontestable mark's registration.
• The infringing mark was registered first.
• The mark is being used to violate the antitrust laws of the United States.

Even though an incontestable mark can still be challenged on these grounds, it is safe from attack on the otherwise common ground that it lacks distinctiveness. Park'N Fly v. Dollar Park and Fly, 469 U.S. 189 (1985).

The presumptions means that in the absence of other credible evidence, the mark registrant wins on that issue, and in the case of incontestability affirmatively shifts the burden of proof to the allegedly infringing defendant.

If the infringing mark is exactly identical, used commercially, and used on identical or similar goods, the infringing goods are counterfeits and the principal register mark entitled to mark owner to addition remedies such as punitive damages, criminal penalties, and ex parte seizure of infringing good upon import by customs official, with the goods that are seized being destroyed if a timely and successful defense is not offered in court.

Even short of a counterfeit goods claim, obtaining a temporary restraining order or preliminary injunction against the sale, distribution or importing of infringing goods is much easier if you have a principal register trademark (denoted by a circle R mark), and easier still if the mark is incontestable, since most of the case is presumed true and so the probability of success on the merits is much greater.

Either federal trademark registration also provides federal court jurisdiction over infringement lawsuits under federal question jurisdiction which is not subject to a $75,000 threshold or to the gamesmanship that can defeat complete diversity in diversity jurisdiction cases. This is convenient when filing suit in many states over the same mark because uniform federal rules make the pleadings in one state possible to recycle in other states.