TRADEMARK REGISTRATION BASICS

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1 TRADEMARK REGISTRATION BASICS HB Litigation Conferences presents Trademark Selection, Protection & Litigation: A Crash Course for Associates December 10, 2009 Janet Marvel Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP * Hilliard, Welch, Marvel, Trademarks and Unfair Competition (3 rd ed. 2007) jmarvel@pattishall.com Why register your mark? While federal registration of a trademark confers many benefits it is important to remember that one can establish trademark rights under the common law simply by using a mark. The Lanham Act provides a cause of action for infringement of unregistered marks under 43(a), 15 U.S.C. 1125(a). See, e.g., Waymark Corp. v. Porta Sys. Corp., 334 F.3d 1358 (Fed. Cir. 2003). Still, significant benefits attend registration including: constructive notice of the registrant's claim of ownership of the mark, 15 U.S.C. 1072; nationwide constructive use as of the date of application, 15 U.S.C. 1057(c); prima facie evidence of the registration's validity, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the mark in commerce in connection with the goods or services specified in the registration certificate, 15 U.S.C. 1057(b); the right to request Customs officials to bar the importation of goods bearing infringing trademarks, 15 U.S.C. 1124; provision for treble damages, attorneys' fees and other remedies in civil actions for infringement 15 U.S.C. 1116, 1120, and the right, after continuous use of the mark for five years after registration, to have the registration become incontestable and thereby constitute conclusive evidence of registrant's exclusive right to use the mark in commerce for the identified goods or services, subject to certain defenses. Constructive Notice and Use Upon registration, the public is charged with constructive notice of the claim of ownership of the trademark, and subsequent users of the mark cannot claim innocence, good * Certain portions of this paper are excerpted from Hilliard, Welch, Marvel, Trademarks and Unfair Competition (3 rd ed. 2007), with permission of Matthew Bender & Company Inc., a member of the LexisNexis Group.

2 faith or lack of knowledge as a defense. A principal registration has nationwide effect, preserving the registrant's right to expand at a later date without fear of having that right usurped by a newcomer. Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959). This nationwide priority right dates back to the time of application. 15 U.S.C. 1057(c); Warnervision Entertainment, Inc. v. Empire of Carolina, Inc., 101 F.3d 259 (2d Cir. 1996). An expired registration normally does not provide constructive notice. Incontestability After it exists for five years, a registration may become "incontestable," meaning that it is conclusive evidence of the registrant's rights in the mark subject to only a few defenses. Incontestably registered marks cannot be challenged on the basis that the mark is "merely descriptive." However, the strength of the mark may still be considered in determining how broad the scope of protection should be in assessing likelihood of confusion. See, e.g. Petro Stopping Centers, L.P. v. James River Petroleum, 130 F.3d 88 (4th Cir. 1997). Incontestably registered marks also can be challenged on the grounds the claimed mark is generic or, in the case of trade dress such as packaging and product configurations, functional. See Retail Servs. v. Freebies Publ'g, 364 F.3d 535 (9 th Cir. 2004) (FREEBIES generic for items offered for free ("incontestability is never a shield for a mark that is generic"); Wilhelm Pudenz GmbH v. Littlefuse, Inc., 177 F.3d 1204 (11th Cir. 1999) (affirming cancellation of registrations for automobile fuse configurations based on functionality). Good faith non-trademark use of a mark by another is permitted under the "fair use" defense to incontestability. Institute for Scientific Information, Inc. v. Gordon & Breach Science Publishers, Inc., 931 F.2d 1002 (3d Cir. 1991), cert. denied, 502 U.S. 909 (1991) (descriptiveness of plaintiff's incontestably registered mark may be considered in context of defendant's fair use defense). It is a defense to incontestability if the defendant adopted his mark without knowledge of the registrant's prior use and has continuously used the mark from a date prior to the constructive use date of the registrant's mark. 15 U.S.C. 1115(b)(5). Other defenses against the plaintiff's incontestable mark include the plaintiff's fraud in procuring the registration, abandonment of the mark in the registration, misrepresentation by the plaintiff, and plaintiff's antitrust violations. Equitable defenses such as laches and acquiescence also are available. Acquisition and Maintenance of Federal Registrations Trademarks Must be Affixed to the Goods Trademarks typically must be affixed to goods in order to qualify for federal registration. Section 45 of the Lanham Act, 15 U.S.C. 1127, provides that use of a mark on goods sufficient for federal registration occurs when the mark "is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the -2-

3 nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce." Use of trademarks in "displays" may also qualify for federal registration. When the claimed use on goods is based on display rather than affixation, it is generally required that the display comprise point-of-purchase materials designed to attract the attention of prospective purchasers. In re ITT Rayonier, Inc., 208 U.S.P.Q. 86, 87 (T.T.A.B. 1980). Service Marks Must Be Used in Connection with the Services Service marks typically must be used on advertising or promotion of services in order to qualify for registration. "Service has been defined as the performance of labor for the benefit of another." In re Canadian Pacific Ltd., 754 F.2d 992, 994 (Fed. Cir. 1985). Valid use of a service mark requires that it be "used or displayed in the sale or advertising of services" rendered in commerce. 15 U.S.C. 1127, 1052, For example, use in a newspaper advertisement to identify real estate services was sufficient in Hovnanian Enterprises, Inc. v. Covered Bridge Estates, Inc., 195 U.S.P.Q. 658 (T.T.A.B. 1977), as was use on handbills to identify entertainment in In re Florida Cypress Gardens, Inc., 208 U.S.P.Q. 288 (T.T.A.B. 1980). Trade Names Can Sometimes Be Registered A trade name can be registered under the Lanham Act, but only if used as a trademark to identify the source of goods or services, and not merely as a company or organizational name. "[T]rade names qua trade names do not qualify for registration," and where an asserted mark is a trade name, "there is a presumption that the present usage is also that of a trade name" and not a trademark. Application of Pennsylvania Fashion Factory, Inc., 588 F.2d 1343, 1345 (C.C.P.A. 1978) (use of retail store name on shopping bags held insufficient). Domain Name Registration Like a trade name, trademark rights are not automatically conferred upon a domain name. A domain name can be registered under the Lanham Act only if it is used as a trademark. The domain name must be used to identify and distinguish the source of the goods or services, in addition to identifying the web site's location. In re Eilberg, 49 U.S.P.Q.2d 1955, 1956 (T.T.A.B. 1998). A domain name is subject to the same requirements as any other potential mark, so the U.S. Patent and Trademark Office ("USPTO") will, among other things, apply the 2(e) bars of descriptiveness, geographical descriptiveness, and surname significance. Moreover, the USPTO does not consider the TLD in its evaluation of a domain name, since the TLD does not act as a source indicator. Thus, a TLD cannot turn an unregisterable term into a registerable trademark. Compare In re Eddie Z's Blinds and Drapery, Inc., 74 U.S.P.Q.2d 1037 (T.T.A.B. 2005) (refusing to register generic BLINDSANDDRAPERY.COM where evidence showed "blinds and drapery" was the phrase used by many businesses to indicate they make and sell those products ) with In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005) (STEELBUILDING.COM not generic for "online retail services in the field of pre-engineered metal buildings and roofing systems" because of ambiguity in whether the term referred to actual building or the act of building with steel). -3-

4 The key question in determining whether a domain name can be registered is whether the domain name has been used as a symbol of product or service origin rather than simply informing the viewer where to find the web site in cyberspace. In re Eilberg, supra, 49 U.S.P.Q.2d at 1957 (holding that the domain name merely indicated the address of the web site and did not separately identify the applicant's services). Collective Marks A mark used to identify a collective group, e.g. a union label, is registerable as a "collective mark" when properly used in a like manner to a trademark or service mark. See, Schroeder v. Lotito, 221 U.S.P.Q. 812, 819 (D.R.I. 1983) (holding that suit for infringement may be brought by the collective mark owner organization on behalf of its members). Certification Marks A certification mark, or a mark used in connection with goods or services to certify region of origin, quality, or characteristics of the goods or services, is also registerable under the Lanham Act. The Underwriters Laboratories "UL" mark and the Good Housekeeping seal of approval are examples of certification marks. The Principal Register The Lanham Act provides for two Registers, the Principal and the Supplemental Register. A mark is not registerable on either the Principal Register or Supplemental Register if it is generic, or if it consists or is comprised of: 1) immoral, deceptive, scandalous, or disparaging matter; 2) the flag or insignia of any nation, state, or municipality or any simulation thereof; 3) a name, portrait, or signature identifying any living individual or deceased President without written consent; 4) a primarily geographically deceptively misdescriptive designation, or 5) a mark likely to be confused with a previously used or registered mark. A "mark" that is merely descriptive, deceptively misdescriptive, primarily geographically descriptive or primarily merely a surname is not registerable on the Principal Register unless it has acquired secondary meaning. That descriptive "mark" may be registerable on the Supplemental Register without such a showing. The Application Process Federal registration of a trademark on the Principal Register is obtained by filing a verified written application with the Trademark Division of the United States Patent and Trademark Office accompanied by a drawing of the mark, specimen labels or facsimiles of the mark as actually used, and the statutory filing fee. Descriptive marks are registerable if they have acquired secondary meaning (or "distinctiveness"). The applicant must identify that its mark is descriptive with secondary -4-

5 meaning by making a claim under Lanham Act Section 2(f), 15 U.S.C. 1052(f). Secondary meaning may be shown by circumstantial proof, such as proof of substantial sales and advertising and by direct evidence, such as surveys. If the Trademark Division determines that no prior registrations exist of marks that are likely to cause confusion and that the mark is otherwise entitled to registration, the particulars specified in the application are published in the Official Gazette of the USPTO. This publication notifies the public of the application in order to allow for possible opposition by any person who believes he or she would be damaged by the issuance of registration for that particular mark. 15 U.S.C. 1062(a). If no opposition proceeding is instituted against a use-based application within the time allowed after publication, a Certificate of Registration is issued. If no opposition is instituted within the time allowed after the publication against an intent to use application for which no amendment alleging use has been filed, the applicant receives a Notice of Allowance, and only after the applicant timely files a Statement of Use is a Certificate of Registration issued. The registrant is then entitled to use notice of such registration, including the symbol in association with its mark. Intent to Use Applications The intent to use applicant must have a bona fide intent to use the mark in connection with the identified goods and services at the time of application. He must commence use of the mark and file a Statement of Use, plus specimens, within six months of the date the USPTO issues the Notice of Allowance for the application, or obtain an extension of time for filing the statement. The initial six month period will be extended for an additional six months upon written application reconfirming the bona fide intent to use, and payment of any applicable fees. Additional six month extensions may be obtained, not to exceed a total of three years from the date the Notice of Allowance is issued, upon similar applications and fee payments plus showings of good cause. Failure to file a timely statement of use will result in abandonment of the application. Post Registration Registration of a trademark on the Principal Register remains in force under the Revision Act for ten years provided that the registrant files an affidavit or declaration of use "within one year next preceding the expiration of six years" from the date of registration. 15 U.S.C. 1058(a). The affidavit must show, with support by specimens, that the mark is still in use in connection with all the specified goods or services, or that nonuse is due to special circumstances and not due to any intention to abandon the mark. If the affidavit is not filed, the registration will be cancelled. Each registration may be renewed for periods of ten years upon proper filing of a renewal application. 15 U.S.C

6 The Supplemental Register The Supplemental Register is for "marks capable of distinguishing applicant's goods or services and not registerable on the Principal Register." 15 U.S.C A registration on the Supplemental Register confers none of the presumptions afforded by a registration on the Principal Register. It does, however, afford the right to possible treble damages for infringement. In addition, it entitles the registrant to use notice of registration in association with the mark. Intent to use applications to register on the Supplemental Register are not permitted. State Registrations Every state provides for the registration of trademarks, and many have adopted the Model State Trademark Bill. When use of a mark is not "in commerce," such registration may be all that is available. Generally, the state statutes specify what may be registered, what constitutes infringement (likelihood of confusion), and remedies. State registrations' actual substantive legal effect in addition to the common law is quite limited in most circumstances. Foreign Registrants and Registrations: Paris Convention and Madrid Protocol Lanham Act Section 44 Section 44(d) of the Lanham Act, 15 U.S.C. 1126(d), allows a foreign national of a country which has signed on to the "Paris Convention" treaty to register a mark in the United States based upon an application to register the mark in the foreign national's home country. If the United States application is filed within six months of filing the foreign application, the mark will be accorded priority as of the foreign application filing date. However, a foreign registrant's mark is not eligible for registration under Section 44 unless it is registerable under U.S. law. See In re Rath, 402 F.3d 1207 (Fed. Cir. 2005) (refusing registration where alleged mark was primarily merely a surname, despite its registration under German law). U.S. applicants may take advantage of Paris Convention priority when filing applications in other Paris Convention member countries. The Madrid Protocol The United States became a member of The Madrid Protocol international treaty in The Madrid Protocol creates a centralized filing system by which trademark owners in member countries can obtain and maintain trademark rights in other member countries. The Protocol sets up a streamlined operation for registering marks in individual foreign countries. Approximately seventy jurisdictions are parties to the Madrid Protocol, including Australia, China, France, Germany, Japan, the Netherlands, Spain, Turkey, the United Kingdom and the United States. Registration takes effect and the trademark owner enjoys the same rights as if the application had passed through the national registration system. If the member country refuses registration within the set time period, the country sends its objections to the Protocol's administering body, the World Intellectual Property Association ("WIPO") and WIPO forwards -6-

7 them to the applicant. The applicant then must appoint local counsel to respond to the objections in the respective foreign jurisdictions. If the member country issues the registration in its country, the mark receives the same protection as other national marks. To obtain protection of a trademark in other member countries, a trademark owner must first own a trademark application or registration in a member country. This application or registration will form the "basic" application or registration. In addition, the trademark owner must be either a national of that member country, be domiciled there, or have a real and effective place of business in that country. The trademark owner can then file a single Madrid Application based on the basic application with the basic application's trademark office ("Office of Origin"). For example, a trademark owner in the United States could file its Madrid Application with the United States Patent and Trademark Office. The applicant pays one fee based on the number of countries designated and the application then can be expanded to include any number of additional member countries. The Office of Origin examines the Madrid Application and certifies that the information in the Madrid Application is the same information contained in the basic application or registration. The trademark owner's Office of Origin then forwards the Madrid Application to the International Bureau of WIPO. WIPO examines the application to make certain it conforms with the minimal established formalities, e.g., the appropriate fee is paid. The member countries that receive the Madrid Application information from WIPO are to treat the application as a properly filed national application. Those member countries independently examine the application under the same standards they use to examine national applications. If the member country is going to refuse registration in its country, it must do so within a set period of time. The Madrid Protocol sets this time period as twelve months, with possible extension to eighteen months and even longer if the national office notifies WIPO of a possible refusal based on an opposition. If the member country fails to act within this time period, the Madrid Registration takes effect and the trademark owner enjoys the same rights as if the application had passed through the national registration system. If the member country refuses registration within the set time period, the country sends its objections to WIPO and WIPO forwards them to the applicant. The applicant then must appoint local counsel to respond to the objections. For the first five years, the existence of the Madrid Registration depends on the fate of the basic registration. For example, if a U.S. trademark owner's federal registration was canceled or limited in any way, the Madrid Registration would be likewise canceled or limited. If such a cancellation or limitation occurs, it is known as a "central attack." There is a three month window, however, after a central attack, during which a Madrid Registration can be transformed into corresponding national rights in the various designated countries and retain the priority in those other countries that was established by the failed Madrid Registration. If, after five years, -7-

8 the Madrid Registration is not canceled or limited in any way, it becomes independent of the basic registration. The Madrid Registration's term is ten years. Trademark owners can renew the Madrid Registration for another ten years through a single filing with WIPO. This renews any national rights the trademark owner obtained in member countries. Notices of assignments of Madrid Registrations are filed with WIPO as well. Under the Madrid Protocol, any assignment must be made to a party that itself is qualified to file for a Madrid Registration. Parties may assign the basic application, the entire Madrid Registration, or any of the individual country designations. Any infringement actions have to be prosecuted and defended individually in the courts of the respective member countries. There are perceived drawbacks for U.S. applicants to using the Madrid Protocol. For example, the U.S. Patent and Trademark Office currently requires a more detailed and less broad description of goods and services than many other Madrid Protocol countries require. Therefore, because Madrid Registrations are dependent on the basic application, trademark owners who register their Madrid Application through the U.S.P.T.O. may receive narrower protection than they would have received had they filed individual national applications. -8-