Benefits of Registration with the State of New York

Certificate of Registration is admissible into evidence as competent and sufficient proof of the registration of such mark (See NYSTAT. S 360-d). This means the starting point in any litigation will be that you claimed ownership of the mark first and the other party has the burden of proving otherwise. Such presumption gives you the right to bring a lawsuit to:

  • get an immediate injunction to stop the other party from using or reproducing your mark; and

  • collect profits from the other party of up to three times those actually derived from use or reproduction of your mark; and

  • collect damages from the other party of up to three times those actually incurred by you; and

  • collect reasonable attorney's fees incurred as a result of bringing the action (litigation) to enforce your trademark rights; and

  • force the disposal of or destruction of any and all infringing materials.


10 Year Duration with renewals of successive 10 years each.

What if I don't register? Do I still have rights in my mark?

Yes, but you won't have any presumptive rights. This means you will be forced to plead ownership with substantial evidence under what's called the "Common Law" (See NYSTAT. S 360-o). This means you won't have a statutory cause of action, but rather will have to file a lawsuit under Unfair Competition doctrines. As such, you will have to plead and prove that the infringer is in competition with you or that confusion as to the source of the goods or services exists. In contrast, if you are registered, you can get an injunction by merely showing a likelihood of injury to your business reputation or that continued infringement will dilute or diminish the strength of your mark (See NYSTAT. S 360-l). In short, registration ensures more predictable outcomes and makes protecting your mark much easier and less expensive.

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