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Overlooking or Foregoing Federal Registration of a Trademark Can Be a Costly Mistake.
by David A. Weinstein (c) 2001
Although proprietary rights in a mark can be acquired in this country simply by using it, these rights may be limited geographically. Further, they may be insufficient to support an infringement claim. Federal registration by the United States Patent and Trademark Office in Washington, D.C. can effectively deal with the geographic limitation issue by extending rights nationwide automatically. Moreover, this procedure provides certain statutory presumptions regarding an owner's exclusive right to use the mark that do not apply to unregistered marks. Because of these attributes and others, there can be no doubt that the costs and time spent to federally register a mark are a wise investment. While the process may take anywhere from nine months to a year or more to complete, the benefits a registration provides can start from the application filing date.
A federal application can be filed if a mark (i) is used on products or services offered in commerce regulated by Congress; or (ii) will be used in such commerce and the application is based upon intent to use; or (iii) is the subject of a foreign application or registration. The Office examines an application for formalities and confusingly similar registered marks. After it does this and determines the mark should be registered, it makes this information public through notice in the Official Gazette of the United States Patent and Trademark Office, which comes out weekly.
Anyone who believes he will be damaged by registration of the mark can oppose it within 30days from the publication date. This is done by filing a Notice of Opposition in the Office. For marks that are registered, it is possible to object to continuing registration by filing a Petition to Cancel. There is a five year window for this, which is measured from the registration date. Once five years passes, a registration can become incontestable if a Declaration is filed in and accepted by the Office.
The registration term is 10 years from the registration date (if the use affidavit is timely filed) and can be renewed for additional 10 year periods by filing a renewal application and paying a government fee.
What kind of marks can be protected in the United States?
- Trademark - a word, name, pictorial matter, symbol, or any of these in combination that a business uses to identify and distinguish its products from other products.
- Service mark - performs the same function as a trademark but with respect to services rather than products. It identifies and distinguishes the services that a particular business offers.
- Certification mark - a mark used by a person other than its owner to certify: regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's products or services; or that the work or labor on products or services was performed by members of a union or other organization. The mark must be used for certification only. It cannot be used both as a trademark or service mark and as a certification mark. And it cannot be used by the owner to identify the owner's products or services.
- Collective service mark/trademark - a mark used by the members of a cooperative, an association, or other collective group or organization to identify their products and services.
- Collective membership mark - a mark used to indicate membership in a cooperative, an association, union, or other collective group or other collective group or organization.
- Trade dress - the overall design or appearance of a product or its packaging, which can include features such as size, shape, color, color combinations, texture, and graphics. Restaurant decor is recognized as trade dress that can be protected the same as a mark
- Federally registered mark - a mark registered in the United States Patent and Trademark Office, Washington, D.C.
- State registered mark - a mark registered in one or more states, usually by the Secretary of State.
- Common law mark - an unregistered mark.
What is appropriate subject matter for a mark?
Certain kinds of words, names, pictorial matter, and symbols are better to use as marks than others. Some cannot function as marks. To function as a mark, a word, name, or symbol must be distinctive when first used with the products or services with which it is used. Or it must be capable of becoming distinctive with respect to those products or services.
A distinctive word, name, picture, or symbol is one that relevant members of the public readily associate with a particular product or service, such as KODAK with film. It is not thought of as giving information about or describing a product or service.
An inherently distinctive word, name, picture, or symbol is one that does not describe a product or service. It can be protected immediately upon first use. A descriptive word, name, picture, or symbol may acquire distinctiveness through long and/or widespread advertising and use in connection with a product or service. At the time this happens, it can be protected as a mark.
From a legal protection standpoint in the United States, the best mark is a word, name, picture, or symbol that conveys little or no information about the nature or features of the products or services with which it is used. This kind of mark is inherently distinctive, strong, and entitled to a broader scope of protection than a mark that conveys information or is commonly used.
In terms of distinctiveness, United States courts have established five categories:
- generic - the name for product or service by which everyone knows it (e.g., bicycle, pizza, broadcasting); it is not and can never become distinctive or be protected
- descriptive - tells about or describes the features, function, uses, nature, qualities or geographic origin of a particular product or service (e.g., Suregrip for nonskid coatings; Paris for perfume); it is nondistinctive when first used and cannot be protected as a mark at that time although it is capable of protection later when it acquires distinctiveness. Surnames and geographic terms are considered descriptive.
- suggestive - does not immediately convey information about a product or service. Rather, it indirectly says something about the features or characteristics of a product or service, which requires thought as well as imagination to know what it means (e.g., Mouseseed for rat poison). This kind of mark is considered inherently distinctive and can be protected from the date of first use.
- arbitrary/fanciful - a mark whose accepted meaning has no significance in reference to and does not convey any information about the product or service (e.g., Camel for cigarettes). This kind of mark is considered inherently distinctive and can be protected from the date of first use.
- coined - a mark that is created solely for use as a mark and has no known meaning (e.g., Clorox for bleach). This kind of mark is considered inherently distinctive and can be protected from the date of first use.
Surnames (FORD), alphabet letters (IBM), numbers (3 IN 1), slogans (YOU CAN BE SURE ITS WESTINGHOUSE), nonfunctional product and packaging configurations (Perrier Indian bottle), nonfunctional architectural features of a structure (McDonald's arch), and the overall appearance of a product or its packaging (Vuitton handbags), called "trade dress," can be protected as marks.
What kind of marks can be federally registered?
Marks that are inherently distinctive (i.e., arbitrary, fanciful, coined and suggestive marks, and trade dress) can be federally registered on the Principal Register. Similarly, a descriptive mark can be federally registered but not on the Principal Register until it acquires distinctiveness; before that happens it can be federally registered on the Supplemental Register.
The United States Patent and Trademark Office maintains two different registers for marks. They Principal Register and Supplemental Register. They differ in the procedural and legal advantages each offers a mark's owner and the kind of marks eligible for registration on each register.
Registration on the Principal Register is preferable because it gives the mark's owner many procedural and legal benefits not available to a mark registered on the Supplemental Register. Also, an intent to use application cannot be filed for registration on the Supplemental Register.
To be eligible for registration on the Principal Register a mark must identify and distinguish products or services (i.e., it must be distinctive). A mark that is capable of distinguishing (i.e., a mark that has potential to acquire distinctiveness) products or services can be registered on the Supplemental Register.
A mark that is clearly eligible for registration on the Principal Register cannot be registered on the Supplemental Register. However, an application to register on the Principal Register can be amended to seek registration on the Supplemental Register. This is possible in certain cases when registration on the Principal Register is refused, such as when the Patent and Trademark Office examiner says the mark is descriptive (e.g., it describes the product or service, or is a surname or geographic term). A refusal to register based upon a confusingly similar mark cannot be avoided by amending to the Supplemental Register.
A mark is not registrable on the Supplemental Register if it can qualify for registration on the Principal Register or if it is unregistrable (e.g., it is generic). Registration of a mark on the Supplemental Register will not prevent its registration on the Principal Register later when it acquires distinctiveness.
The process of registering on either register is essentially the same. However, after a mark is found registrable the process differs.
When can a mark be registered?
From a proprietary rights acquisition standpoint, it is clearly advantageous to file a federal application as soon as possible. Nationwide rights in a mark can be measured from the application filing date. See: What Are The Advantages Of Registering A Mark?
In most cases a mark is eligible for state registration immediately after its first use. But this is not necessarily the case with respect to federal registration.
A federal application can be filed after a mark has been used on products or services available in interstate commerce, or before a mark is used based upon an intent to use it; or based upon a foreign application or registration even though the mark has not been used in the United States. A federal application cannot be filed for a mark that will be used only in intrastate commerce.
A federal registration gives a trademark many legal and procedural advantages not available for unregistered marks. Therefore, a federal application should be filed as soon as possible after determining that its use and registration in the United States appear to be okay. This is the case whether the mark has been used or is intended to be used in interstate commerce.
What is a registered mark?
Each state has and maintains a registry of marks as does the United States Patent and Trademark Office. A registered mark is entered in one or more of these registries. An unregistered mark ("common law" mark) is not. If a mark is entered in the Office registry, it is called a federally registered mark.
What are the advantages of registering a mark?
Among other benefits, federal registration can establish a nationwide priority date with respect to the right to exclusively use the mark throughout the United States, regardless of where it is actually used. This benefit is referred to as "constructive use."
The priority date is the date that determines when a trademark owner's rights in a mark begin. It can be the date a mark is first used or the federal application filing date if a mark has not been used earlier. It is important because it can be the controlling factor with respect to whether one user of a mark will prevail when objecting to another person's use of a confusingly similar mark. It can also be controlling with respect to whether one user can withstand another person's infringement claim.
Among other advantages, federal registration gives a mark's owner: automatic jurisdiction in a federal court for an infringement lawsuit; a basis to bar importation of products bearing an infringing mark; an opportunity to make the right to exclusively use a mark incontestable; and, a nationwide priority date on the application filing date. The importance of the last two mentioned advantages should not be overlooked.
David A. Weinstein is an intellectual property law attorney in Denver, Colorado. His practice emphasizes trademark and copyright protection in the United States and other countries throughout the world. He was a Trademark Attorney at the United States Patent and Trademark Office, Washington, D.C.; a member of the General Foods Corporation corporate law department in White Plains, New York, and a member of the Borden, Inc. corporate law department in Columbus, Ohio, responsible for trademark, copyright and regulatory matters. He is the author of two books, one titled How to Protect Your Creative Work: All You Need to Know About Copyright and the other titled How to Protect Your Business, Professional and Brand Names
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