There are two separate and distinct federal trademark registers: the Principal Register and the Supplemental Register.

Fanciful, arbitrary, suggestive marks and marks that have become distinctive through exclusive and continuous use in commerce for more than five years are eligible for registration on the Principal Register.  Once a mark is on the Principal Register, it is afforded the full range of benefits and protections under the Lanham Act. A successfully registered mark is prima facie evidence of registrant’s ownership and exclusive nationwide right to use the registered mark in connection with the specified goods or services. 15 U.S.C. § 1057(b).  The registration provides constructive notice of a claim of ownership which means that an opposing litigant cannot raise a defense of good-faith adoption against a mark on the Principal Registration. 15 U.S.C. § 1057(c) and 15 U.S.C. § 1072.  Once a mark on the Principal Register has been in continuous use in commerce for five years, it may become incontestable and immune from certain attacks and defenses. 15 U.S.C. § 1065.  In a successful infringement action, the registrant may seek increased statutory damages.  15 U.S.C. § 1117 and 18 U.S.C. § 2320.  Finally, marks registered on the Principal Register can be used to stop the importation of infringing goods or services into the United States. 15 U.S.C. § 1124. There are additional benefits to registration on the Principal Register which are held in common with marks on the Supplemental Register.

The Supplemental Register is often an option for weak marks that can potentially identify goods or services from a particular source. These are the marks that are already in use in commerce and have been refused registration on the Principal Register because they are merely descriptive, deceptively misdescriptive, primarily geographically descriptive or primarily merely a surname. The Supplemental Register is preferential to merely continued common law use because it affords certain protections.  Marks on either the Principal Register or on the Supplemental Register may give notice of federal registration by using the encircled “R;” the registrants have the right to assert claims of infringement of a registered mark in federal court; the registration provides notice to those conducting clearance searches; the registration bars registration of subsequently filed confusingly similar marks and the registration may serve as the basis for foreign filing.

However, marks on the Supplemental Register do not enjoy a presumption of validity, ownership and exclusive right to use the mark, they may not be recorded with Customs to prevent importation of counterfeits and they may not become incontestable after five years of exclusive and continuous use.  After five years of exclusive and continuous use in commerce, a Supplemental Register registrant is eligible to file for registration of his/her mark on the Principal Register, only if the mark has acquired a secondary meaning. Only if the mark has become distinctive in connection with the goods or services will registration on the Principal Register be allowed.

When registration is not available on the Principal Register, trademark owners should explore the option of Supplemental Registration because it affords many advantages over common law use.

Not all trademarks are created equal. Certain types of marks are entitled to little or no protection, while others are afforded a strong scope of protection against competing marks. The purpose of a trademark is to inform consumers of the source of the goods or services. Strong trademarks can be used to prevent others from using confusingly similar marks (i.e. source identifiers) in connection with similar goods or services, so the consumer is not confused as to the source. Regardless of whether a mark is a common law mark or a registered mark, the strength of the rights acquired in the mark depends on its level of distinctiveness. There are five categories of trademarks within the spectrum of distinctiveness. Each category will be addressed from the weakest type of mark to the strongest.

Generic Marks: These marks are the weakest and an owner cannot use this type of mark to identify the source of his/her goods or services or register a generic mark with the USPTO. A generic term is one that describes a whole category or a group of goods or services. For example, an owner cannot register the trademark “COLA,” because the generic term describes an entire category of beverages. Because a generic term is simply a descriptor, no one owner can claim exclusive rights to it.

Descriptive Marks: These are the second weakest type of mark and often convey an immediate idea of the ingredients, qualities or characteristics of a good or service. Much like generic terms, these are words or phrases that are commonly used in connection with goods and services and can be difficult to distinguish from one another. An example of a descriptive mark would be “Clean Shower” for a shower cleaning product.  The mark is simply identifying what the product does and uses a descriptive term that is not unique to one specific product. Under the common law, a descriptive mark is entitled to little or no protection, with certain exceptions. The USPTO may not register “merely descriptive” marks. This is because registration would possibly prevent competitors from describing their own products. Sometimes, descriptive marks can become associated with the goods or services with which they are used. After a minimum of five years of using a mark in commerce with goods or services, the mark may be said to have acquired distinctiveness or secondary meaning because purchasers have come to associate the descriptive words with one source for the products or services. At the USPTO, an owner may attempt to show that they used the mark for at least five years exclusively and continuously. If it can be shown that by the fifth anniversary, the mark has acquired distinctiveness/secondary meaning, it may qualify for registration with the USPTO. Two examples of descriptive marks that have acquired a secondary meaning are AMERICAN AIRLINES and KENTUCKY FRIED CHICKEN. Surnames fall in the descriptive category as well, such as the hotel chain HILTON Hotel. Aside from famous marks, when descriptive marks are afforded protection, it is usually very narrow.

Suggestive Marks: These marks often suggest an aspect or feature of an owner’s goods or services without directly describing the product.  There is sometimes a fine line between suggestive marks and descriptive marks. Suggestive marks require more thought to grasp the connection between the mark and the good or service. They are more vague than descriptive marks, which directly describe the product. Suggestive marks have a higher chance of being approved by the USPTO because standing alone, the word or phrase does not immediately convey the goods or services to which it is connected. These marks, which are more unique or creative, can be afforded a broader scope of protection. An example of a suggestive mark would be “COPPERTONE,” for the brand of sunscreen. The mark “COPPERTONE,” suggests the outcome of the product, without directly describing it. Another example is “PLAYBOY.” Some of the most contentious litigation hinges on whether a mark is descriptive or offensive.

Arbitrary Marks: These are existing words or phrases that would not normally be associated with an owner’s goods or services. These are terms or phrases that are unrelated to the good or service itself. They are the second strongest type of mark because the owner is giving a common word or phrase a new or unique meaning by associating it with his/her product. An example of a strong arbitrary mark would be “UBER” for the ridesharing service. While the term “uber” is now associated mainly with the ridesharing service, Merriam Webster’s Dictionary defines the term “uber” as, “being a superlative example of its kind or class.” Other examples include “APPLE” for technological products and “CAMEL” for tobacco products.

Coined or Fanciful Marks: These marks are the strongest, and most well-protected marks. A fanciful mark is a made-up term that does not have a previously existing dictionary definition. A coined term is a new and unique combination of words without a previous meaning. Since these terms did not exist prior to their usage, they are extremely difficult, or even impossible to challenge. Examples include: EXXON, ROLEX, LEXUS, XEROX and CLOROX.

In conclusion, when choosing a trademark, it is important for an owner to come up with a creative name for his/her goods or services.

So long as there is not a federal registration or pending federal application for a similar mark for similar goods or services when an owner uses his/her mark in commerce, he/she establishes common law rights in the geographic area of use, if he/she is the first user of the mark in that area. Common law rights give the owner exclusive rights to the mark in a specific geographic location. These rights do not protect the mark throughout the state, or nationally. Common law rights afford limited mark protection within the area of use. Under common law, an owner can send a cease and desist letter in an attempt to prevent infringement by a secondary user of the mark.  Common law trademark rights can be enforced in federal court under the Lanham Act or in state court under state statutes.

Though federal trademark registration is not required, it can enhance and extend the owner’s common law protections in many ways. First, federal registration of the mark gives the owner legal presumption of the exclusive rights to use the mark throughout the United States and its territories in connection with the goods or services identified in the registration. This is advantageous when the owner is attempting to police his/her mark in and out of court.

Second, because it is a federal registration, the mark is listed in the USPTO database. Others will see the owner’s mark in the database when conducting a search prior to filing their own. This can help to prevent others from using a mark that is too similar to the one already registered. It also puts secondary users on constructive notice of the registrant’s rights. Moreover, the USPTO uses the database when conducting its own searches during trademark examination and will cite the owner’s mark against a confusingly similar one in a later-filed application.

Third, a federal registration allows the owner the right to record his/her trademark with the U.S. Customs and Border Protection. The agency will then have the ability to use the trademark registration to help prevent others from importing infringing or counterfeit foreign goods.

Finally, a federal trademark registration means that the owner has the benefit of using the encircled “R” with his/her mark. The mark is usually added to the right side of the mark and indicates that the owner has federally registered the mark with the USPTO. The encircled “R” acts as actual public notice of the owner’s exclusive nationwide rights in the mark.

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.

Trademarks are privy to a certain level of common law protection. This protection is generated through actual use in commerce and is afforded to the first user of the mark in commerce within the geographic area in which it is used. Filing for a trademark registration on either the state or national level is not required but can expand and enhance the common law protections granted to the first user of the mark. A state trademark registration will provide protection within the specific state. A federal trademark registration will protect goods or services sold in interstate commerce, or between the United States and another country. A federal registration provides exclusive rights to the mark throughout the U.S., as to any mark first used after the filing of the registration. This prevents latecomers from using a similar trade or service mark on similar goods or services anywhere in the U.S.

Similar to trademarks, copyrights are afforded protection under common law.  Copyright automatically vests in the author of an original work at the time the work is expressed in a tangible medium. However, a copyright infringement case cannot be filed in federal court until the user has registered his/her mark. Moreover, an author may not seek statutory damages if the registration is filed after the infringement begins.

A patent registration must be applied for within one year of any of the following: 1) any public use of the invention by the inventor, a sale of the invention, an offer of sale, or public use of the invention in the United States, or 2) any description of the invention by the inventor in a published document in any country.  Failure to timely file a patent application results in the invention becoming part of the public domain.  Unlike trademarks and copyrights, there is no common law protection for inventions or methods of use. The exclusive rights afforded by a patent are purely statutory and do not exist without formality.

Often, the three terms are heard interchangeably in casual conversation. However, each of the three statutes has different functions, protections and symbols.

A trademark can be a word, name, symbol or device that is used in commerce to indicate the source of the goods and to distinguish them from the goods of others. Names, phrases or slogans, the way a word is presented, logos and packaging details can all function as trademarks. The purpose of trademark protection is to inform consumers of the source of goods or services. The source becomes synonymous with the quality and characteristics of the goods or services. In this way, a trademark becomes a shortcut for consumers in selecting between products or services. Trademark rights can be used to prevent others from using a confusingly similar mark which could potentially create a likelihood of confusion with the original mark. In the United States, trademark rights are generated by the actual use of marks in commerce. Wherever actual use occurs, the first user of the mark develops common law rights within the geographic scope of use.  Common law rights are denoted by either a TM for trademarks or an SM for service marks. These marks show claim, but not official USPTO registration. Common law rights can be extended and enhanced by registering a trademark, either in a particular state or on a national level. A registered trademark enjoys the use of the encircled R.

Something that is original, creative, artistic or literary can be copyrighted. Copyrights protect “original works of authorship.” A copyright provides protection for the original and creative expression of an idea that is embodied in a tangible medium. In this instance, originality means that the work has “more than a de minimus level of creativity.” Copyright owners can prevent others from doing the following: reproducing the work, preparing derivative works, distributing copies, performing the work publicly, displaying the work publicly, and digitally transmitting the audio of the sound recordings. Registration is not required to acquire copyright; it exists upon the moment of creation. However, in order to pursue a copyright infringement action in court, the owner must have a federal copyright registration. Federal copyright registration is prima facia evidence of the author’s ownership of the copyrighted material. The fact that a work is subject to copyright protection is evidenced by the encircled C.  Full notice includes three components: the encircled C, the year of publication and the author’s name.

Utility patent protection applies to machines, methods, processes, articles of manufacture or composition of matter, and/or improvements thereto, ornamental designs for articles of manufacture. In order to ascertain patent protection, an invention or method of use, at minimum, must be novel, useful and not obvious. In this instance, not obvious refers to what existed previously, and if a skilled professional in the specific field would not have found the invention or method of use an obvious extension or combination.  The proper notice for a patent is the word “patent,” or, the abbreviation “pat.” combined with the number of the patent. If the notice cannot be put on the article, the word “patent” or the combination of “pat.” and the patent number can be affixed to the owner’s packaging or other advertising materials; such as labels if the package contains more than one article. The words “patent pending” serve as fair notice that a patent registration has been applied for. Once the registration has been approved, the word “Patent” shows full ownership.

An overly broad listing of goods and services in a trademark application constitutes fraud on the U.S. Trademark Office (USPTO) and will result in cancellation of the registration. Pro-active measures to correct false statements may mitigate loss of the registration. Contact the office today for an audit of your trademark portfolio.

The USPTO adopted a firm approach to eliminate the overly broad enumeration of goods and services in a trademark registration. In Medinol Ltd. V. Neuro Vasx, Inc., 67 USPQ 2d 1205 (TTAB 2003), the Trademark Trial and Appeal Board (TTAB) canceled a trademark registration premised upon a finding that the trademark owner had defrauded the USPTO when filing a Statement of Use misstating use of the trademark on all goods listed in the application.

In the past, trademark owners have over-reached in listing goods within a particular class (the laundry list) or have over-reached in identifying classes of goods with which the mark is or will be used. This type of miss-statement can occur at several points in the trademark process: the listing of goods/services or classes may be overly inclusive at the time the intent to use application is filed; the overly inclusive list may be maintained when the applicant files a statement of use or amendment to allege use in support of an intent to use application; the overly inclusive list may occur at the time the 5th year Section 8 affidavit is filed; or the overly inclusive list may occur at any subsequent 10 year renewal.

Trademark applicants must be accurate in listing goods within an application. The intent to use “1(b)” application must not be misused as a vehicle for reserving every possible use imaginable. The application should identify only those goods/services that the owner has a “bona fide” intent to use. The resulting registration must be accurate as to the goods and services with which the trademark is used. Trademark registrants must be diligent in maintaining use of the trademark in connection with each and every one of the goods and services enumerated in the registration or they must identify the goods/services with which the mark is not used at one of the foregoing points. A false statement with regard to actual use (i.e. wrongfully indicating that the mark is in use in connection with all listed goods or services) constitutes FRAUD on the USPTO. Such fraud will result in the cancellation of the registration. The USPTO will not entertain the excuse of inadvertent mistake to mitigate of finding of fraud. In the Medinol case, the trademark owner claimed its inclusion of un-used goods in its Statement of Use was an inadvertent mistake. The TTAB held that the registrant’s “explanation for the misstatement . . . – that the inclusion of stents in the notice of allowance was ‘apparently overlooked’ – does nothing to undercut the conclusion that [the trademark owner] knew or should have known that its statement of use was materially incorrect.” Medinol at 1210.

Recently the Medinol result of cancellation of the registration has been limited to a one class registration. In G&W Laboratories, Inc. v. G W Pharma Limited (TTAB Jan. 29, 2009) the TTAB addressed the situation of the fraudulent inclusion of a class of goods within a multi-class registration. In the G&W Labs case, the TTAB cancelled the fraudulently included class from the registration but did not result in the loss of the entire registration.

Most recently, the TTAB has signified that it will consider an applicant/registrant’s proactive steps to correct the identification of goods/services as a rebuttable presumption that fraud was not intended. In Zanella Ltd. V. Nordstrom, Inc., 90 USPQ2 d 1758 (TTAB 2008), the TTAB refused to grant a summary judgment where the registrant had affirmatively deleted those goods on which it was not using its mark. Three of the deletions occurred within the Section 8 Affidavits and one of the deletions occurred upon a voluntary request of the registrant after the Section 8 Affidavit was filed. The TTAB found that the registrant’s “timely proactive … action . . . in correcting any false statements prior to any actual or threatened challenge to the registrations creates a rebuttable presumption” that the registrant “did not intend to deceive” the USPTO.

In conclusion, the TTAB has taken a stringent approach to the inaccurate listing of goods and services in trademark applications and resulting registrations. Most of the cases on point have occurred when the registrant attempted to enforce a registration against a third party. Rather than enforcing their registrations, these trademark owners lost their registrations. To avoid this outcome, trademark applicants and registration owners should review the listing of goods and services they submitted to the USPTO. Proactive steps to correct any inaccuracies may save the registrations. Failure to take any corrective measures will clearly result in the cancellation of the trademark registration on the basis of fraud.

If you are concerned about the listing of goods or services in your trademark application or registration, contact our office today to discuss a portfolio audit.