Excerpts From the Guide To Registering Trademarks

WHAT IS A TRADEMARK?

General

In simple terms, a trademark or service mark is the indicia used by a business, usually a word, name or logo, to identify its products or services. Such use of indicia may be through advertising in magazines, newspapers, on television, or on the World Wide Web or placed on the manufactured product to distinguish that particular product or service from those of its competitors.

The importance of such business indicia, not only to the owner, but to the general public is recognized through the enactment of The Lanham Act and numerous state registration systems protecting trademark rights. The principal purposes of trademarks are twofold:

a) to protect consumers against confusion; and

b) to protect trademark owners who have invested “energy, time and money in presenting to the public the product, ... from the [trademark’s] misappropriation by pirates and cheats”.

What Can Be Registered as a Mark?

The Lanham Act specifically provides that trademarks and service marks include: “words, names, symbols or devices or a combination of same”. As interpeted by U.S. courts, a protectable mark is anything that acts to identify its owner’s goods or services. The following have been found to be registrable: individual letters, groups of letters, slogans, numbers, background designs, simple geometric shapes, color, non-functional aspects of product configurations and package configurations, trade dress, broad concepts such as interior designs of restaurants or common elements of a line of goods, building designs, statues, moving images, sound or a fragrance.

While it is possible to register unconventional marks, it is still far from common to see such registrations. For example, only a single fragrance trademark has ever been registered and it was recently canceled from failure to file a Section 8 declaration. There have only been nine other applications for fragrance marks, eight of which have been published, six of which belong to the same applicant and one of which has been abandoned. The last such application was filed in December, 1997. There have been no applications for fragrance service marks. On the other hand, since the first registration of a sound mark,over ninety such marks have issued with the number of applications markedly increasing each year. Approximately one hundred and twenty marks consisting of a color or colors on all or part of the goods have been approved by the PTO.

TYPES OF REGISTRATION

Identifying and Determining the Mark

As a general rule, less is more, which means that:

• the less that is registered, the broader the protection afforded to the registered features;
• a registration for a simple word mark, not in special form and not in combination with a design, typically offers wider protection than a registration directed to the combination of that word mark in specific form and/or with a design;
• a trademark owner that owns separate registrations for a word mark and a design mark ordinarily used as a composite mark will have greater protection against another’s use of a mark substantially similar to either the design or word portion of the composite mark;

However, there is a limitation on the general rule: if one mutilates the mark by leaving out an integral part of the mark, the application may be rejected. In deciding whether elimination of an element amounts to mutilation, one must consider whether the remaining elements create a separate commercial impression.

Types of Registrable Marks

It is important to correctly characterize the type of mark in an application for registration as a trademark, service mark, collective mark or certification mark. Failure to do so may:

1. require extended prosecution in the U.S. Patent and Trademark Office,
2. cause the application to be denied registration, or
3. put in question the validity of any resulting registration.

Trademark

A trademark is used to identify and distinguish goods of one person or entity from those manufactured or sold by another and indicate the source of the goods.

Goods amount to any corporal personalty and covers a limitless range of tangible objects, as illustrated by the following list of diverse items cited in the US Patent and Trademark Office’s Trademark Acceptable Identification of Goods and Services Manual, which have been found acceptable:

computer programs;
caricatures;
dog clothing;
driftwood;
manure;
rocks;
sand;
amusement park rides;
skin grafts;
vaccines;
mice; and
human sperm

Practice Note: The identification of the goods in a trademark application is one of the key factors in determining rights under the resulting registration.

Service Mark

A service mark is used to identify and distinguish an intangible service of one person or entity from that of others, i.e., activities, rather than goods, are distinguished. It must also indicate the source of the services. Yet despite the definition of a ‘service mark’ in The Lanham Act, as the Federal Court has noted:

The act does not define ‘services,’ nor does the legislative history provide such a definition. However, our predecessor courts state that the term ‘services’ was intended to have broad scope, reasoning that no attempt was made to define ‘services’ simply because of a plethora of services that the human mind is capable of conceiving.

The criteria in determining a service mark are:

1. is there a service associated with the mark;
2. the service must be a real activity;
3. performed to the order of, or for the benefit of, someone other than the applicant; and
4. not merely an ancillary activity or one which is necessary to the applicant’s larger business (i.e., the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.

Examples of activities found to be services include:

renting chain-linked fences;
antics;
solicitation of advertising for one’s own publication;
actuarial services;
adoption agencies
animal husbandry;
cabarets;
butler services;
chaperoning;
cryogenic preservation;
flea marketing;
in vitro fertilization;
providing Turkish bath facilities;
safaris;
tattooing; and
zodiac consultation.

Basis For Registration

There are three bases for application for registration under The Lanham Act:

1. actual use (Section 1(a) of The Lanham Act)
2. intent to use (Section 1(b) of The Lanham Act)
3. foreign registration (Section 44 of The Lanham Act).

PracticeNote: It is important to correctly designate the basis for the application.

Use in Commerce

Requirements

1. bona fide use in the ordinary course of trade
2. interstate use, e.g. between State of New York and Kentucky; or
3. territorial use, e.g. between a U.S. state and a U.S. territory, such as Guam, Puerto Rico; or
4. d) between the U.S. and a foreign country.

Note:

• intrastate use of a mark usually, by itself, is not sufficient to be considered use in commerce.
• Caveat: if the intrastate use directly affects a type of commerce which is or may be lawfully regulated by Congress, it could be sufficient use in commerce for registration of a trademark.
• Purely foreign commerce is not considered use in commerce.
• If actualuse has occurred before application is made for trademark registration, such application should be based on the actual use in commerce.

Practice Note: While previously you had to state the exact nature of your use in commerce, as of October 30, 1999 you are only required to indicate that use in commerce has occurred.

Intent to Use

If actual use has not occurred, the application can be filed based on a bona fide intent to use.

Requirements:

1. Section 2.21(a)(5) of the Code of Federal Regulations requires that intent to use applications under Section 1(b) include a “claim of a bona fide intention to use the mark in commerce” to receive a filing date
2. “bona fide intent” measured by an objective standard
3. proof of actual use must be submitted to the PTO before a trademark registration can issue.

Foreign Registration - Section 44 of The Lanham Act, 15 U.S.C. §1127

Eligible applicants may apply to register a mark in the United States based on ownership of a foreign registration.

Requirements:

1. the mark must be "a substantially exact representation” of the mark as it appears in the registration certificate of the mark registered in the applicant's country of origin.
2. Only slight, inconsequential variations between the mark in the United States application and the mark shown in the foreign registration are permitted.
3. The mark in the United States application may not be a translation or transliteration of the mark in the foreign registration.
4. If the foreign application or registration covers a series of distinct marks, the applicant must file separate applications in the United States to register each of the marks the applicant wishes to register in the United States.

The Trademark Registers

The first is the Principal Register for marks which, as of the date of registration, function as trademarks, service marks, collective marks or certification marks and which otherwise qualify for registration.

The second, the Supplemental Register, is for registration of potential marks that are capable of distinguishing applicant’s goods or services but are not inherently distinctive and have not yet acquired the necessary secondary meaning.

Registration on either register provides the following advantages and entitlements:

1. Use of the ® symbol, “Registered in the Patent and Trademark Office”, or “Reg. U.S. Pat. & Tm. Off.”, to denote federal registration;
2. Original jurisdiction in Federal District Courts for trademark infringement;
3. Original jurisdiction in Federal District Courts for claims under state and common law for unfair competition when they are joined with a substantial and related claim under The Lanham Act;
4. Monetary remedies as provided in the Lanham Act including infringer’s profits, damages, and costs, and in appropriate cases, trebled damages and attorneys’ fees.

The Principal Register

Requirements for registration on The Principal Register:

1. an application has been correctly made for a mark which truly functions as a trademark, service mark, collective mark or certification mark;
2. the mark has been used in commerce as prescribed by The Lanham Act;
3. the mark is not confusingly similar to the mark of another
4. the mark may not include any of the bars to registration (cf. Section 2.01 above)

Advantages of registration on The Principal Register

1. The registration is prima facie evidence of the validity of the registered mark, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the registered mark.
2. The registration is proof that the mark has acquired secondary meaning.
3. The registration is constructive notice of a claim of ownership, eliminating any justification or defense of good faith adoption and use made after the registration date
4. For registrations resulting from applications filed after November 16, 1989, the registrant is entitled to a constructive use date as of the filing date of the application.
5. The registration becomes incontestable after five years on the register upon the filing of an appropriate affidavit or declaration of continuous use and, thus, becomes conclusive evidence of the registrant’s exclusive right to use the mark, subject to certain statutory defenses.

The Supplemental Register

1. Type of Marks Registered: Customarily these are potential marks capable of distinguishing applicant’s goods or services, but which are not inherently distinctive and have not yet acquired the necessary secondary meaning.
2. Scope of Protection: Registration on the Supplemental Register grants limited protection provided
• the mark is not generic and
• is in use in commerce.
3. Registration to Enable Foreign Registration: The Supplemental Register allows a U.S. applicant to receive a domestic registration for a mark not yet registrable on the Principal Register as an aid in obtaining a foreign registration of the mark. Likewise, an application based solely on Section 44 (foreign registration), may be registered on the Supplemental Register without alleging lawful use in commerce or anywhere in the world.
4. Right to Use ®: Registration does grant the applicant the right to use this symbol to indicate registration and to bar any confusingly similar mark.
5. Disapplication of The Lanham Act: Unlike the Principal Register, a registration on the Supplemental Register is not subject to the requirements of, nor entitled to the advantages of the following sections of The Lanham Act:
• Section 1(b) — Intent to use is not a basis for an application for registration on the Supplemental Register.
• Section 2(e)vThat a mark is merely descriptive, deceptively misdescriptive or primarily merely a surnames is not a bar to the registration of the mark on the Supplemental Register.
• Section 2(f) — A mark which has acquired distinctiveness is registrable on the Principal Register.
• Section 7(b) — The certificate of registration for a mark registered on the Supplemental Register is not prima facie evidence of the validity of the registration.
• Section 7(c) — Filing of an application on the Supplemental Register does not constitute constructive use of the mark, and therefore does not confer a nationwide right of priority against third parties.
• Section 12(a) — Marks accepted for registration on the Supplemental Register are not published for opposition.
• Section 13 — Marks accepted for registration on the Supplemental Register are not subject to opposition challenges.
• Section 14 — Cancellation proceedings for marks registered on the supplemental register are under Section 24 of the Lanham act without the limitations of Section 14.
• Section 15 — Marks registered on the Supplemental register do not achieve any of the rights of incontestability provided in Section 15 of the Lanham Act.
• Sections 16 to 18 — Marks on the Supplemental Register cannot be the subject of interference, opposition or concurrent use proceedings.
• Section 22 — The certificate of registration for a mark registered on the Supplemental Register is not prima facie evidence of the registrant’s ownership of the mark.
• Section 33 — The certificate of registration for a mark registered on the Supplemental Register is not prima facie evidence of the registrant’s exclusive right to use the mark in commerce on the goods or services specified in the registration.
• Section 42 — Supplemental Registration can not be registered with U.S. Customs in order to prevent the importation of counterfeit goods bearing a federally registered trademark.

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