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Protecting Trademarks II: Registration

Andrew J. Sherman, Partner, Dickstein Shapiro Morin and Oshinsky LLP

Prior to the passage of the Trademark Law Revision Act of 1988, a trademark was not eligible for registration if it had actually been used in interstate commerce. To entrepreneurs, this meant that a substantial amount of time and expense might be invested in a proposed trade identity for a new product or service, with virtually no assurance that the mark could ever be properly registered and protected.

However, under the current law a company may file an application to file for registration of a trademark, based on actual use or upon a "bona fide intention" to use the mark in interstate commerce (known as an "intent-to-use" filing). This process allows the applicant to conduct some market research and further investigation, without the need to actually put the mark into the stream of commerce.

Filing Procedure

To file an "intent-to-use" application for trademark registration, you should file an application that meets the basic requirements of the U.S. Patent and Trademark Office (USPTO). If the application is approved by the examiner, a Notice of Allowance will be issued. The applicant will then have six months to file a Statement of Use, with actual examples of use, such as marketing materials, receipts, invoices, newspaper clippings, etc. (commonly referred to as "specimens") attached. After review of the Statement of Use and specimens, the mark will be registered. An applicant may request extensions of time for filing of the Statement of Use, for up to four successive six-month periods. Failure to file by the deadline is considered an abandonment of the application.

Regardless of whether the filing is made under the "actual use" or "intent to use" provisions, an application must be prepared and filed in the classification that is appropriate for the goods and services offered. A trademark examiner then reviews the application to determine whether it meets the statutory requirements and whether similar trademarks have already been registered in the same or similar lines of business. You or your attorney must respond to any and all of the examiner's concerns. This process continues until the application is either finally refused or recommended by the examiner for publication in the Official Gazette (which serves as notice to the general public).

Anyone who believes that they would be injured by registration may file a Notice of Opposition within 30 days of the publication date. If the parties fail to resolve any differences, there will be a hearing before the Trademark Trial and Appeal Board (TTAB). The TTAB is also the appropriate body to appeal the examiner's final refusal.

Benefits of Registration

Registration is effective for 10 years but may be renewed for additional 10-year terms thereafter, so long as the trademark is still in actual use in interstate commerce. The registration may, however, be cancelled after six years unless an affidavit of continued use is filed with the USPTO, which demonstrates that the registrant has not abandoned the trademark.

Once your trademark has been registered with the USPTO, you will enjoy several commercial and legal benefits, including (a) the right to protect against businesses using your marks in the future; (b) the right to bring legal action in federal court for trademark infringement; (c) recovery of profits, damages and costs in a federal court infringement action and the possibility of triple damages and attorneys' fees; (d) the right to deposit the registration with the U.S. Department of Customs in order to stop the importation of goods bearing an infringing mark; and (e) a basis for filing trademark applications in foreign countries.

A trademark that is in actual use in commerce but which does not qualify for registration on the Principal Register for one or more reasons (for example, because it is merely descriptive or a surname) may be registered with the USPTO on the Supplemental Register. Registration on the Supplemental Register does not provide the trademark the same level of protection afforded by registration on the Principal Register, but does give the registrant:

  • the right to sue in federal court and obtain statutory remedies for infringement;
  • a possible right to registration in foreign countries whose laws require prior registration in the home country;
  • protection against federal registration by another of the same or a confusingly similar mark; and
  • the right to use the encircled "R" symbol (®) on goods.

Registration on the Supplemental Register allows the owner of the trademark to put the world on notice of his/her use and rights to the mark. Further, registration of a descriptive trademark on the Supplemental Register may be advantageous for a period of time while the mark's use is increased to the point where it becomes so substantial as to cause the trademark to acquire "secondary meaning." It is at this time that the mark may qualify for registration on the Principal Register.

It may be advantageous for a start-up company to take advantage of registration on the Supplemental Register, if registration is denied on the Principal Register until its products/services are sold and the mark, through increased use, gains secondary meaning.

The Trademark Application

A separate application must be filed for each mark for which registration is requested. The trademark application consists of :

  • a written application;
  • a drawing of the mark (a black-and-white or typed rendition of the mark, to be printed in the Official Gazette and on the registration certificate);
  • the filing fee ($245 as of the date this article went live), required only if the application is based on prior use of the mark in commerce; and
  • three examples of use, showing actual use of the mark in connection with the goods or services. For example, trademarks may be placed on the goods, on the container for the goods, on displays associated with the goods or on tags or labels attached to the goods.

Applicants of intent-to-use applications must make use of the mark in commerce before the examples are submitted to the USPTO. They are filed along with the Statement of Use, within six months of filing the intent-to-use application.

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