Posts Tagged ‘filing’

Benefits of Copyright Registration

Friday, May 29th, 2020

Copyright exists automatically in an original work of authorship as soon as it is fixed in a tangible medium. The copyright affords the author six exclusive rights that are protected by U.S. law. Although not mandatory, an author can enhance the protections of copyright by registering the work with the United States Copyright Office. Once a work is registered it establishes an author’s claim to copyright with the Copyright Office, which allows the author to defend and enforce the rights of the work through litigation. Notice of registration most commonly consists of the copyright symbol © or the word “Copyright,” along with the name of the copyright owner and the year of first publication. While placing a copyright notice on any original work is good practice, placing a copyright notice on a work does not substitute for registration.

An application for registration can be filed by the author or owner of an exclusive right in a work, the owner of all the exclusive rights or an agent on the author or owner’s behalf. (see this post for copyright ownership) There are three essential parts to a registration application: a completed application, a nonrefundable filing fee and a nonreturnable deposit. The deposit is a copy, or copies, of the work being registered and “deposited” with the Copyright Office.

The certificate of registration is important because it creates a public record containing all of the critical information relating to the original work and the author or owner. The information that becomes public record includes the title of the work, the author of the work, the name and address of the claimant or copyright owner, the year of creation and other information regarding the status of the work, such as whether it’s been published, has been previously registered or includes preexisting material. Since registration is not mandatory, it can be done at any time within the life of the copyright. (see this post for the lifespan of copyright)  There are certain benefits to timely filing a copyright application addressed in benefit three below.

Aside from establishing a public record of a copyright claim, registration has multiple advantages. Following, are four of the most critical statutory benefits as stated by the Copyright Office. First, before an infringement suit can be filed in court, the work must be registered with the Copyright Office. Second, registration establishes prima facie evidence of the validity of the copyright and the facts stated in the certificate when registration is made before or within five years of publication. Third, when a registration is made prior to infringement or within three months after publication of a work, a copyright owner is eligible for statutory damages, attorneys’ fees and other related costs. Lastly, registration allows a copyright owner to establish a record with the U.S. Customs and Border Protection for protection against the importation of infringing copies.

The effective date of registration to the certificate of registration is the day the Copyright Office receives a completed registration application. If the registration does not contain all of the required elements, as mentioned above, the date will not be set until the Copyright Office is in possession of those elements. Though there is no deadline for this, copyright registration (or refusal) from the Copyright Office is necessary prior to filing a lawsuit for copyright infringement. An applicant may seek statutory damages and attorneys’ fees in an infringement suit if the action began after the effective date of registration. Though collection can only take place after the effective date of registration, the law provides a three-month grace period after publication wherein full remedies may be recovered for any infringement action that began during those three months after publication if registration is made before the period ends.

Although registration is not mandatory since copyright is instilled in a work as soon as it is fixed in a tangible medium, registration (indeed timely registration) has many benefits.

How long does Federal Trademark Registration last? How do I maintain my Registration?

Friday, January 3rd, 2020

An owner’s federal trademark registration rights can last indefinitely as long as he/she has properly registered the mark and continues to use the mark in commerce in connection with the listed goods and services and stays on a strict post-registration maintenance schedule. To maintain a trademark registration,  an owner must file a Declaration of Use and/or Excusable Nonuse of Mark under §8 of the Trademark Act along with a specimen evidencing the use. This must be filed on a date that falls on or between the fifth and sixth anniversaries of registration (or for an extra fee of $100 per class,  it can be filed within the six-month grace period following the sixth anniversary).

The owner must file a §8 Declaration of Use with a supporting specimen and an Application for Renewal under §9 of the Trademark Act, on a date that falls on or between the ninth and tenth anniversaries of registration (or for an extra fee of $100 per class, it can be filed within the six-month grace period following the registration expiration date). Following the tenth anniversary of the mark, the owner must file a §8 and §9 within the 12-month period proceeding every 10-year anniversary thereafter.

Failure to file each of the three components in a timely manner (including the six-month grace period) will result in a cancellation of the mark; once a mark is canceled, it cannot be revived or reinstated. If the owner wishes to reinstate the mark, he/she must file a brand-new trademark application.

In addition to filing a §8 between the fifth and sixth anniversary of registration, an owner may choose to file a §15 Declaration of Incontestability, which is not required but gives the owner the benefits of incontestability. The §15 Declaration serves as conclusive evidence of the validity of the registered mark, of the registration of the mark,  of the owner’s ownership of the mark and the owner’s exclusive rights to use the mark with the goods or services, as stated by the USPTO.

The §15 Declaration of Incontestability may be filed at any time after the fifth year of registration so long as: No final legal decision has been issued against the mark, there is no challenge to the mark pending and the mark has not become generic.

Since the date to file the §8 and the first availability to file the §15 coincide, they may be filed together. The §15 affidavit gives a registrant the status of incontestability. Once incontestable, a registration can only be challenged for invalidity based on limited grounds: (1) the registration or the incontestable right to use the mark was obtained by fraud, (2) the registrant abandoned the mark, (3) the mark is used to misrepresent the source of its goods or services, (4) the infringing mark is an individual’s name used in his/her own business, or is otherwise prohibited or reserved under the Lanham Act, (5) the infringing mark was used in commerce first – prior to the incontestable mark’s registration,  (6) the infringing mark was registered first,  (7) the mark is being used to violate the antitrust laws of the United States, (8) the mark lacks the strength or scope of protection necessary to avoid a likelihood of confusion, (9) the mark is functional in nature or (10) any equitable principles apply, including acquiescence, estoppel or laches. Throughout the life of a registration, the owner must continue to enforce his/her registration rights.

Hot Topics


Practice Areas

Trade Secrets
Internet Law
The hiring of a lawyer is an important decision that should not be based solely upon advertisements. Before you decide, ask us to send you free written information about our qualifications and experience. This web site is designed for general information only. The information presented at this site should not be construed to be formal legal advice or the formation of a lawyer/client relationship.