BitLaw

Benefits of Federal Registration

There are numerous advantages to securing federal registration of a trademark. Perhaps the most important advantage is that federally registered trademarks are national is scope, regardless of the actual geographic use made of the mark. This national scope contrasts greatly with the limited geographic range of common law trademarks (for more information on this point, see the BitLaw discussion of common law marks).

Additional substantive benefits received through federal registration include:

• The ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances;
• The ability to recover attorneys fees in infringement actions;
• The incontestable status that a mark can achieve after five years of registration, which serves to eliminate most arguments that the registrant does not have the exclusive right to utilize the mark;
• The right to use the ® symbol in connection with the mark, which may deter potential infringers;
• Increased ease of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;
• The right to sue for infringement in federal courts; and
• The ability to have the customs service block the importation of goods bearing an infringing mark.

Federal registration also makes it easier to prove an allegation of trademark infringement by providing prima facie evidence of trademark ownership and use. The registration can also be used as evidence that the mark does indeed function as a mark and is not confusingly similar to other registered marks.

Marks that can be registered

Only certain marks can be registered under the Lanham Act. The U.S. Patent and Trademark Office will review each application for trademark registration to determine whether the mark is registerable under the Act. To make this determination, the U.S.P.T.O. will see if the mark falls into one of the following prohibited categories:

• Confusingly Similar Marks: The U.S.P.T.O. will not allow registration of marks that so resemble a preexisting mark when use of the proposed mark is likely to cause confusion, mistake, or deception. If this situation exists, the circumstances should be examined for the possibility of trademark infringement. Note that because common law marks have limited geographic scope, it is possible that the existence of a common law mark may prevent the federal registration of a mark without prohibiting its use.
• Merely Descriptive or Misdescriptive Marks: The category of prohibited, merely descriptive marks can be broken down as follows:
  • Descriptive of the goods (i.e., SMALL for a subcompact automobiles;
  • Descriptive of a quality or feature of the goods (i.e, FAST for automobiles);
  • Geographically descriptive (i.e., DETROIT for automobiles); and
  • Descriptive of an individual by being primarily merely a surname (i.e., SMITH for automobiles).
  Marks that are deceptively misdescriptive are also prohibited on the Principal Register. Merely descriptive marks can be registered on the Supplemental Register (see description below under types of applications), assuming the mark is not generic and is not disqualified under any other criteria. In addition, it is possible for descriptive marks to "become distinctive" by achieving secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Descriptive marks and secondary meaning are described further in the BitLaw discussion of the strength of marks.
• Immoral, Deceptive, or Scandalous Marks;
• Marks that disparages or falsely suggest a relationship with a person (living or dead) an institution, a belief, or a national symbol, including any mark which brings them into contempt or disrepute;
• Geographically misdescriptive marks on liquors;
• Marks that constitute a government's flag or coat of arms;
• Marks that consist of a name, portrait or signature identifying a particular living person without their consent; or
• Marks that consist of a name, portrait, or signature of a U.S. President during the life of the President's widow, without her/his consent.

Types of Trademark Applications

A trademark or service mark may be registered with the United States Patent and Trademark Office on either the Principal or Supplement Registers. The Principal Register is the register with which most people are familiar. It is the Principal Register that grants the benefits described above to registered marks. Three methods exist by which an applicant may apply for federal registration on the Principal Register.

First, an applicant who has already commenced using a mark in commerce may file an application based on that use (a "use" application). For the purpose of obtaining federal registration, commerce means all commerce that may lawfully be regulated by the U.S. Congress, for example, interstate commerce or commerce between the U.S. and another country. The use in commerce must be a bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark. Use of a mark in purely local commerce within a state does not qualify as "use in commerce."

The second method for filing an application for federal registration is filing based upon a bona fide intention to use the mark in commerce (an "intent-to-use" application). If an applicant files based on a bona fide intention to use the mark in commerce, the applicant will have to use the mark in commerce and submit proof that the mark has been used in commerce before the mark will be registered. More details regarding this proof are set forth below.

Finally, under certain international agreements, an applicant from outside the United States may file a trademark application in the United States based on an application or registration in another country.

The Supplemental Register is primarily designed for marks which are descriptive in nature, in that they are capable of distinguishing the applicant's goods or services once secondary meaning is established, but at the present time they do not have secondary meaning. The benefits that apply to Supplemental Registrations are that the mark will appear in trademark searches, and that the registrant is given the right to use the ® symbol in connection with the mark. In addition, having a mark registered on the Supplemental register will assist in achieving registration of the mark in certain foreign countries. Finally, Supplement Registrations can be used to help prove exclusive use of a mark for a five year period, which is one of the ways in which secondary meaning may be proved to the U.S.P.T.O. An application for Supplemental Registration cannot be based upon an intent to use the mark--only use based applications can be made for Supplemental Registrations.

Registration Process

An application for federal registration of a mark must be filed in the name of the owner of the mark, and is usually accomplished through a trademark attorney. In order to file a trademark application, the following information must be collected:

• the legal name of the applicant (often a corporate name);
• the state of incorporation (for a corporation) or the country of citizenship (for an individual);
• the exact form of the mark;
• a description of goods or services with which the mark will be used; and
• the international classification(s) for the goods and services.

The international classes have been developed so that all possible goods and services will fit into one or more of the forty-two pre-defined classifications. The classes are listed and explained elsewhere in BitLaw. It is possible that a single application will involved goods and/or services in multiple international classes.

The materials that must be filed with the U.S. Patent and Trademark Office to file for trademark registration are as follows:

• an application form (obtainable from the U.S.P.T.O.) containing a declaration;
• a drawing of the mark, which is a single page which contains:
  • the name of the applicant,
  • the address of the applicant,
  • the dates of first use for the mark,
  • the description of goods or services on which the mark will be used,
  • the international classifications of the goods or services, and
  • the mark itself;
• three identical specimens of the mark in use; and
• a trademark application fee in the amount of $245 per international class.

When an application is received, the U.S. Patent and Trademark Office reviews it to determine if it meets the minimum requirements for receiving a filing date. If the application meets the filing requirements, the PTO assigns it a serial number and sends the applicant a receipt about two months after filing.

About four months after filing, an examining attorney at the U.S.P.T.O. reviews the trademark application and determines whether the mark may be registered. If the examining attorney determines that the mark cannot be registered, the examining attorney will issue an office action listing any grounds for refusal and any corrections required in the application. The examining attorney may also contact the applicant by telephone if only minor corrections are required. The issuance of an office action is a frequent occurrence, and usually does not mean that the mark will never be registered. The applicant must respond to any office action within six months, or the application will be abandoned. If the applicant's response does not overcome all objections, the examining attorney will issue a final office. The applicant may then appeal to the Trademark Trial and Appeal Board.

Oppositions and Cancellations

If the examiner does not make any objections to the application, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the PTO. The PTO will send a Notice of Publication to the applicant indicating the date of publication.

Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. Even if no opposition is filed, and the application becomes registered, it is still possible for a third-party to object to the registration of a particular mark. This objection is usually made through a cancellation proceeding, which is similar to an opposition proceeding except that it takes place after registration.

Opposition and cancellation proceedings are formal proceedings similar to an abbreviated court trial, except that the proceedings are held before the Trademark Trial and Appeal Board (a division of the U.S.P.T.O.) and the use of live witnesses is extremely rare. Typically, the party bringing the cancellation or opposition action is complaining that the mark being registered is confusingly similar to a mark owned by it, while the other party disputes that claim.

Proof of Use

If an intent to use application was filed, it is necessary to file proof of use of the mark before it will be registered by the U.S.P.T.O. If the applicant has begun to use the mark prior to the publication of the mark, then the proof of use should be filed in connection with an Amendment to Allege Use. The Amendment to the application must include a verified declaration of use signed by the applicant, and specimens showing how the mark is actually used. Once the Amendment to Allege Use is filed and accepted by the U.S.P.T.O., the application will be treated as if it were filed based upon the actual use of the mark in commerce.

Once the mark has been published, it is not possible to prove use of the mark until after the opposition period has been completed. If no opposition is filed after the mark is published, the U.S.P.T.O. will issue a Notice of Allowance. The applicant then has six months from the date of the Notice of Allowance to either (1) use the mark in commerce and submit a Statement of Use, or (2) request a six-month Extension of Time to File a Statement of Use. The applicant may request additional extensions of time under certain circumstances. If the Statement of Use is filed and approved, the PTO will then issue the registration certificate.

After Registration

A mark will be registered only after the mark has been published, the opposition period has expired, and proof of use has been filed. The duration of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.

Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, ®, may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues.