® InfoJur.ufsc.br
© Copyright 1998 Lloyd L. Rich
Introduction
Trademarks and service marks* are used in
publishing for series and periodical titles, graphic characters, names of
publishing companies and product lines, Internet domain names, slogans, and for
identifying other products or services. Trademarks do not need to be federally
registered in order to be protected. Without federal registration a trademark
may be protected under the common law or state law when registration occurs in
a particular state.
With common law, the ownership and protection
of a trademark is automatic once the mark is used in commerce. State law will
protect a mark once it is used in commerce and registered in a particular
state. Trademark rights usually belong to the first user in a geographical area
for a particular product or service. Common law or state law protection is
probably satisfactory, and may be the only type of protection that is available
for a mark that is only used in a single geographic market such as a city or
state. Ownership and protection of a trademark will continue for as long as the
owner uses the mark in commerce.
The federal Lanham Act governs the federal
registration of trademarks that are registered with the Patent and Trademark
Office ("PTO") on either the Principal Register or Supplemental
Register. There are important advantages the trademark owner obtains from the
federal registration of a trademark that are not available if the trademark
owner only relies upon common law or state law for protection. Therefore, if
the trademark owner has a trademark that is eligible for federal registration
but that has not already been registered on either the Principal Register or
Supplemental Register, or if there are plans to introduce a new mark, then
there are reasons why the trademark owner should consider federal registration
of the mark. This article will discuss the advantages and general procedures
for obtaining a federal registration.
Categories of Marks
The selection of a particular mark that will
function as a trademark is very important. This is because the particular mark
will be placed on a continuum where the mark will be categorized as fanciful,
arbitrary, suggestive, descriptive or generic. The strength of trademark
protection varies along the continuum with the greatest protection for fanciful
and arbitrary marks, somewhat lesser protection for suggestive marks, even less
protection for descriptive marks and finally no protection for generic marks.
Fanciful marks consist of "coined"
words or terms that have been invented and do not have a dictionary meaning,
such as Kodak, Polaroid or Exxon. Arbitrary marks are those marks that consist
of commonplace words, terms or symbols that are used in such a manner that they
do not describe the product or service with which they are associated and
includes such marks as Black & White for scotch whiskey and Apple for
computers. Suggestive marks are familiar words or phrases that are frequently
used by publishing and media companies in an inventive way to
"suggest" what their product or service really consists of and are
the middle ground between arbitrary and descriptive marks; such marks include
Nickelodeon for a children's television channel and At A Glance for calendars. Descriptive
marks describe the product, service or contents of the product and include such
marks as Continuous Progress for educational materials and Personal Finance for
a financial investment magazine. Generic marks are names of the product or
service itself and these terms cannot function as trademarks; such terms
include Aspirin, Consumer Electronics Monthly as a title of a magazine and
Pocket Book for paperback books.
Advantages to Registration on the Principal
Register
There are many advantages to registering a mark
on the Principal Register. First, once a mark is registered on the Principal
Register, there is a presumption of trademark ownership and validity in any
subsequent litigation involving the trademark. Trademark registration acts as
prima facie evidence of (1) the validity of the mark and its registration, (2)
the registrant's ownership of the mark, and (3) the registrant's exclusive
right to use the mark in commerce under specified circumstances. Trademark registration
also creates what is called "actual notice" or "constructive
notice" and therefore informs all parties that the trademark is the
exclusive property of the trademark owner. This is important because such
notice permits the trademark owner to recover profits or damages for trademark
infringement.
Second, registration on the Principal Register
usually provides the trademark owner with rights in the mark for a larger
geographical area than is possible under common law and state law. If the mark
is registered on the Principal Register, the trademark owner will enjoy
nationwide protection from potential infringement. Under common law the mark
will only be protected in the specific geographical area in which the mark is
used in commerce and under state law the mark it is only protected in the state
in which it is registered.
Third, the scope of protection under both
common and state law is usually restricted to the specific products or services
for which the mark has been used while a the scope of protection for a
federally registered mark is usually much broader in that it encompasses
related products or services.
Fourth, the Lanham Act provides judicial
remedies that are more far-reaching and costly to an infringer than those
available at common law. For example, a trademark owner could be awarded treble
damages against an infringer whose infringement was deemed to be
"willful". In addition, there is the possibility that the court would
award attorney fees in exceptional cases where the infringement was deemed
malicious.
Finally, after five years the mark may become
"incontestable". While the term is somewhat of a misnomer -- because
the mark can, indeed, be contested under certain circumstances --
incontestability is the highest status of trademark protection under federal
law. Once a registration becomes five years old, the trademark owner in order
to obtain incontestability status must file an "affidavit of
incontestability" with the PTO. Once this is accomplished the Lanham Act
forecloses certain grounds of attack on the validity of the mark. The mark may
then only be challenged and possibly "cancelled" if it has become
generic, has been abandoned, was obtained through fraud, or is deceptive,
scandalous, or disparages a person, institution or belief or national symbol,
or brings a person into disrepute. Three important grounds for cancellation
that are precluded once a mark becomes incontestable are that the: (1) mark is
not inherently distinctive and lacks secondary meaning; (2) mark is confusingly
similar to a mark that someone else used prior to your registration and
continues to use; and (3) mark is functional.
Advantages to Registration on the Supplemental
Register
If a mark is determined by the examiner to not
be inherently distinctive or the mark is descriptive and has not as yet
acquired secondary meaning, then the mark cannot be initially registered on the
Principal Register but instead may be registered on the Supplemental Register. Registration
on the Supplemental Register still requires that the mark must be capable of
distinguishing the trademark owner's products or services from the products or
services of another. There is no intent-to-use application for registration on
the Supplemental Register.
Registration of the mark on the Supplemental
Register, while not providing the more expansive protection of a mark
registered on the Principal Register, will provide the following benefits to
the registrant.
An infringement action may be brought in
federal court.
The mark is on file with the PTO and can be
cited by the PTO against a later application by a third party to register a
substantially similar mark on the Principal Register.
The registrant can subsequently apply to have
the mark registered on the Principal Register. This can be accomplished by
showing that the mark has acquired "secondary meaning. A showing of
secondary meaning may be demonstrated once the mark has been in use for a
period of time -- usually five years.
Registration on the Principal Register
Registration on the Principal Register is
available for marks that are either "inherently distinctive" or have
acquired "secondary meaning". Generally, a mark that is inherently
distinctive is a mark that does not merely describe the product or service to
which it is attached; instead, it is in some way arbitrary, fanciful, or
suggestive. A descriptive mark may acquire secondary meaning once the consumer
learns to associate that mark with a single source for the product. Secondary
meaning may be established by demonstrating a period of use of the mark, sales
volume, and advertising/promotional activities and expenditures. In addition,
registration of the mark on the Principal Register requires that the mark has
been used or will be used in interstate commerce.
Federal registration of a trademark, assuming
therer are no major difficulties during the examination process, normally takes
approximately twelve to fifteen months. Although the trademark registration
process is not highly complex it is quite dissimilar to the relatively matter
of course process that accompanies a copyright registration application. There
are two types of applications for registering a mark on the Principal Register:
a "use application" and an "intent-to-use application". Use
applications are for marks that have already been used in interstate commerce. On
the other hand, an intent-to-use application is filed when there is intent to
use the mark in commerce as some future date. This application is similar to a
reservation system in that it permits the trademark owner to reserve their use
of the mark.
Trademark registration requires a filing fee
for each class of goods for which the trademark owner wants to register the
mark; as a general rule print publishers register in Class 16 and electronic
publishers in Class 9. Many trademark owners register their marks in multiple
classes depending upon the breadth of their product line and the services they
provide. The completed application form contains a description of the products
or services that use or intend to use the mark, dates of first use for use
registrations, a drawing of the mark that conforms to the PTO's specifications,
and, for use registrations, samples of the mark as it has actually been used in
commerce.
Once an application is filed it is assigned to
a PTO examiner who reviews the application. The examiner pays particular
interest to (1) the description of goods, (2) type of mark and whether the mark
is "inherently distinctive", "descriptive" and has acquired
"secondary meaning" or "generic", and (3) whether the mark
is too similar to another mark and therefore likely to lead to a
"likelihood of confusion" in the marketplace. Frequently the examiner
will issue an "Office Action" that requires the trademark owner to
provide additional information regarding the above-mentioned matters.
Once the examiner approves a mark, the mark is
published in a PTO publication entitled the Official Gazette. Upon publication,
any third party believing they will be damaged by the mark has thirty days to
file an "opposition" with the PTO. If an opposition occurs it is
generally because the trademark registrant's use of the mark has created a
likelihood of customer confusion with respect to one or more of the opposer's
marks for the same or related products/services or suggests an association or
affiliation with the opposer's company when, in fact, no such association or
affiliation exists. The likelihood of confusion criterion is most frequently
based upon related products/services, and occasionally on non-related
goods/services if the marketing of the products/services are such that
marketing efforts would be focused upon the same purchasers under circumstances
that could, because of the similarity of the parties' marks, give rise to the
mistaken belief that the products/services originate from the same source.
The opposition is a formal procedure that is
conducted before the Trademark Trial and Appeals Board of the PTO; this
procedure is primarily a "paper trial" where the parties file
documents relating to their use of the mark that is in conflict. At the
conclusion of the opposition procedure a ruling is handed down that either
permits or denies the registration of the mark; this decision is appealable.
If a mark is not opposed during the thirty-day
period opposition period the PTO will move forward with the registration. It
usually takes two-to-three months from the end of the opposition period for
registration to be finalized, whereupon the trademark owner receives a certificate
of registration for the mark and may begin using the trademark registration
symbol, ® with their products/services. A trademark owner, assuming a diligent
trademark search of other marks prior to using the mark and/or submitting the
application has been conducted, should not be overly concerned with
encountering an opposition since oppositions do not occur frequently;
approximately three percent of trademark applications result in the filing of
an opposition.
The primary difference in the procedure for the
intent-to-use application from the use application is that once the mark has
been approved by the examiner, and if no opposition has been filed or if the
opposition has been rejected, is that the PTO grants the trademark owner a
"notice of allowance". Once the trademark owner receives the notice
of allowance the owner has six months to begin to use the mark on their
products or services in interstate commerce. The trademark owner may obtain
six-month extensions of up to two and one-half years before using the mark on
their products/services in interstate commerce. The initial six-month extension
is available upon application, but any additional six-month extensions will
only be granted upon the showing of "good cause". Once the mark is
used in interstate commerce, a "statement of use" with an additional
fee must be filed with the PTO. The mark will then be registered on the
Principal Register and the trademark owner will receive a certificate of
registration and begin using the trademark registration symbol, ®.
Once a mark is registered on the Principal
Register, the registration date relates back to the date that the application
was filed. If the registration of a mark is rejected by the examiner, the
trademark owner may appeal that decision to the Trademark Trial and Appeals
Board and ultimately seek judicial review of the rejection.
The examination process for a mark that will be
registered on the Supplemental Register is similar to the process for the
Principal Register. Once the mark has been approved for registration on the
Supplemental Register the trademark owner will receive a certificate of
registration and begin using the trademark registration symbol, ®, with the
trademark.
Effective November 16, 1989, the initial term
of federal registration for a trademark was reduced from twenty to ten years. Trademark
registrations may be renewed every ten years indefinitely, provided that the
mark is still used in interstate commerce.
CONCLUSION
Suffice it to say that there are substantial
benefits to the federal registration of a trademark, especially if the
trademark owner wishes to use the mark in nationwide commerce. There are many
specific rules and nuances that govern federal trademark registration that this
article could not possibly discuss. Therefore, if you are planning to register
your trademark with the PTO you many want to consult with an attorney versed in
trademark law.
* The term "trademark" when used in
this article also refers to service marks.