“Trademarks are critical to any business, they provide instant identification”

Not only does a trademark draw attention but it provides protection from others attempting to establish recognition through your identity. Recognition being the “key” to any successful franchise system, it is imperative that you do everything to insure enforcement of your trademark rights.

 

Although federal registration provides a national scope of protection, you are not fully protected until the trademark rights are established from use of the mark. For those franchisors who have received an “intent to use” registration, do not sit idle on your registration because it bestows no enforceable rights in the mark. The law still requires actual use before you accrue any enforceable rights. Whether you have any enforceable rights in a mark may also vary if your registration is on the federal “supplemental” register rather than the “principal” register.

 

Just as the name connotes supplement is an add on. Most franchisors only look to a supplemental register registration where they have a secondary mark that is descriptive in nature and has yet to acquire a secondary meaning, i.e. a slogan. Unlike the principal register that gives one nationwide recognition, conferring superior rights to the user, there is no presumption of incontestability on the supplemental register. By placing the mark on the supplemental register and using it over a period of time your mark may become a candidate for registration on the principal register.

 

The process of registering your mark is a MUST but it is also important for you to keep up with the renewal date, as well as filing continued use affidavits. Although your registration is effective for ten years you must file an affidavit of continued use between the fifth and sixth anniversary date of registration. So mark the date on your company calendar and don’t rely exclusively on a third party to send notice that affidavits are due to be filed.

 

Many franchisors and their counsel believe state registration of a trademark is a waste of time and money because of the national scope of federal registration. Although this question is the subject of a later article there are definitely some distinct advantages to weigh in deciding whether to initiate or forego a state trademark registration program. If you would like to find out more information on state registration please email or call at the address and number listed below.