Posts Tagged ‘registration’

The Difference Between the Principal Register and the Supplemental Register

Tuesday, January 14th, 2020

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.

 

 

Selecting a Strong Trademark

Friday, January 10th, 2020

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.

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.

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