Chapter 5: Registration

Question 1

Registration

Answer 1

1. Initial examination includes a search for prior registered marks that may be confusingly similar (applicant bears no obligation to conduct a search)
2. After application is allowed, competitors may initiate an administrative opposition procedure before PTO during a limited time period
3. After opposition period expires and registration issues, public may initiate an administrative proceeding before PTO to cancel
4. Registrants enjoy a presumption of validity
5. Fraud = registration cancelled
6. Examination system
7. TM registration does NOT create rights; it only confirms the existence of rights
8. TM registration provides notice to the public of the existence and nature of the claim of rights–this benefits the public by reducing the cost of avoiding infringement

Question 2

Domain names

Answer 2

1. Differ from trademarks (first to file system)
2. rights dependent on registration of the doman name by ICANN
3. as long as no identical name registered in that doman, registration is granted

Question 3

U.S. filing bases

Answer 3

1. actual use of a mark in commerce under 1(a)
2. bona fide intention to use (ITU) a mark in commerce under 1(b)
3. a claim of priority based on an earlier filed foreign application under 44(d)
4. registration of a mark in the applicant’s country of origin under 44(c)

Question 4

Registration process

Answer 4

1. Is the TM already used in interstate commerce? If not, consider ITU application
2. Identify the TM: word mark, design, combination, color features?
3. Applican’t first name and address
4. Date of first use of the TM anywhere and first use in interstate commerce
5. Specimen to show manner of use (i.e. labels, hang tags, brochures, signage)
6. Declaration that all statements are TRUE and no other person has a right to the TM
7. Filing fee

Question 5

Disclaimer practice

Answer 5

1. 6: authorizes PTO to require applicants to disclaim unregistrable components of otherwise registrable marks
2. the point of disclaimer practice is to allow the registration of composite marks having nonregistrable components, without creating the false impression that the applicant is claiming exclusive rights in any of the non registrable components in insolation

Question 6

Publication

Answer 6

1. If PTO determines that the mark is entitled to registration, it publishes the mark in the Official Gazette of the USPTO for opposition
2. The public has 30 days from publication to file a notice of opposition ($$$) or an extension of time up to 90 more days (free)

Question 7

Opposition

Answer 7

1. An admin proceeding before the TTAB in which interested members of public may challege PTO decision to register a mark
2. Must pay the required fee within 30 days of publication or within extension period
3. Must include a concise statement of the reasons for the belief that the opposing party would be damaged by the registration of the mark

Question 8

Fraudulent procurement

Answer 8

1. Applicant owes the PTO a duty of candor
2. Anyone who breaches this duty may be guilty of FP, a ground for cancellation
3. Fraud can be found at any point in time
4. Statements made were: (a) false; (b) made with knowledge of the falsity; AND (c) material to the examiner’s decision to approve the application

Question 9

Fraudulent procurement: Bose (new intent standard applied by TTAB)

Answer 9

1. Applicant made a false representation to USPTO
2. The false representation is material to the registrability of a mark
3. Applicant had knowledge of the falsity AND
4. Applicant made representation with the INTENT to deceive the USPTO
5. Professor: since this standard has changed, there has been no fraud found

Question 10

Examination process

Answer 10

1. PTO verifies that the TM complies with statutory requirements and determines grounds for rejection: 2(a)-2(f)
2. If application is approved, then it’s published in Official Gazette
3. Time for opposition: challege registration as inappropriate under Lanham Act or concurrent use proceeding
4. If no opposition, PTO will issue certificate of registration (typically within 3 months)
5. If application is rejected, appeal to TTAB

Question 11

2(a)

Answer 11

1. scandalous, immoral, or deceptive
2. (Harjo v. Pro-Football)

Question 12

2(b)

Answer 12

flags or coat of arms of the US, state, or foreign nation

Question 13

2(c)

Answer 13

1. name portrait, or signature of living individual without the individual’s consent,
2. or of deceased president of US during the life of his widow, if any, except by the written consent of the widow

Question 14

2(d)

Answer 14

the applied-for TM would likely cause confusion with an existing registered mark or prior pending mark

Question 15

2(e)

Answer 15

1. Merely descriptive or misdescriptive
2. Primarily geographically descriptive
3. Primarily geographically deceptively misdescriptive
4. Primarily merely a surname

Question 16

2(f)

Answer 16

Acquired secondary meaning
1. Objections based on merely descriptive, primarily geographically descriptive, and primarily merely a surname can be overcome by secondary meaning,
2. i.e. proof of substantially exclusive and continuous use of TM in commerce for 5 years before the date on which the claim of distinctiveness is made

Question 17

Principal register

Answer 17

33(a) and 7(b) (the primary one):
1. shows ownership and validity of the registered mark
2. is evidence of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services in the registration
3. national protection
4. publication to others
5. bars infringing imports
6. incontestability after 5 years
7. treble damages (3 times the amount)
8. presumptions of validity, ownership, and exclusive right to use become CONCLUSIVE if the registration attains incontestable status

Question 18

Supplemental register

Answer 18

23-28:
1. marks not registrable on the Principal Register may be registered here if they are capable of distinguishing the applicant’s goods and services
2. lower levels of benefits
3. primarily used to assist US applicants in acquiring foreign TM registrations
4. marks that are not inherently distinctive cannot go on here
5. generic terms cannot be registered here or on principal, but merely descriptive can be registered here
6. if TM can’t show secondary meaning, then it can be registered here (could’ve been able to register on principal but weren’t able to show secondary meaning)
7. considered an admission that the TM is WEAK

Question 19

Principal vs. Supplemental: Differences

Answer 19

1. While a Principal Registration is PRIMA FACIE EVIDENCE of the registrant’s exclusive right to use the mark, a Supplemental Registration has no such evidentiary effect;
2. While a Principal Registration is CONSTRUCTIVE NOTICE of claim of ownership so as to eliminate a defense of good faith, a Supplemental Registration has no such effect;
3. While a Principal Registration may become INCONTESTABLE after five years of registration, a Supplemental Registration can never achieve that evidentiary status;
4. Registration on the Supplemental Register cannot be used as a basis for Customs to stop importations of infringements into the U.S.
5. Only seek registration on the Supplemental Register once the mark is in use in commerce

Question 20

Principal vs. Supplemental: Advantages

Answer 20

1. Supplemental Registration allows the owner of a registered mark to bring suit for infringement
2. Supplemental Registration can be cited by an Examiner against future trademark applications for confusingly similar marks on either the Principal or Supplemental Registers
3. The owner of a Supplemental Registration is legally entitled to use the ® symbol
4. May re-apply to the Principal Register after 5 years

Question 21

Trademark maintenance

Answer 21

TM registration may remain in force indefinitely, but ONLY IF registrant makes timely filings to maintain and renew registration

Question 22

Notice: Lanham Act 22

Answer 22

1. Lanham Act § 22 provides that registrants may display registered mark w/ ® notice or equivalent words. Registrants who fail to give notice cannot collect profits or damages for infringement unless infringing D had actual notice of registration
2. Those who assert Common Law §43(a) rights in a mark frequently choose to display mark with a “TM” (or “SM”) notice to signal to the marketplace that informal common law rights are claimed

Question 23

During 5th and 6th year of registration: Lanham Act 8

Answer 23

Lanham Act 8:
1. Affidavit of continuing use: “don’t cancel my TM, I’m still using it” OR
2. Excuse for non-use
3. Specimen: something demonstrating use
4. Failure to do so results in automatic cancellation of registration (done to clear the register of deadwood because many businesses fail within 5 years)
5. Remains in force for 10 years
6. Acts like a check-in to let PTO know you’re still using the TM

Question 24

Every 10 years: Lanham Act 9

Answer 24

Lanham Act 9:
1.Renewal application: similar to affidavit of continuing use filed w/specimen
2.Failure to do so results in automatic cancellation of the registration
3.May be renewed for successive 10 year period without limitation if registrant timely files renewal application within one year before expiration of registration or 6 month period

Question 25

Any time after 5th year registration/Incontestability: Lanham Act 15

Answer 25

Lanham Act 15: (typically filed same time as you file 8) grants incontestable status to a TM in continious use for 5 consective years subsequent to date of registration if it is still in use in commerce provided that:
1. There are no final decisions adverse to registrant’s claim of ownership of mark, or to registrant’s right to register same or to keep same on register; and
2. There is no pending in PTO or court proceeding concerning rights; and
3. An affidavit is filed w/Director w/in one year after expiration of any such five-year period setting forth grounds in paragraphs (1) and (2); and
4. No incontestable right shall be acquired in a mark which is generic.

• After 14’s time limit (5 years) has run, a registration is subject to challenge in a cancelation proceeding ONLY on the grounds specified in 3-5, irrespective of 15
• Concept of incontestability is irrelevant to a cancelation proceeding 14

Question 26

Cancellation: Lanham Act 14

Answer 26

Lanham Act 14:
1. provides that any person who believes he is or will be damaged by a registration, including as a result of dilution, may petition to cancel the registration
2. First 5 years: (a) filed by a person who believes they may be injured by registration (b) any ground that would have precluded registration in the first place

Question 27

Cancellation: 14(a)(3)

Answer 27

14(a)(3): a cancellation petition may be filed at any time after registration if the cancellation is based on one or more of the following grounds:
* genericness
* functionaility
* abandonment
* fraud in obtaining registration
* violation of 4 (relating to collective and certification marks)
* violation of 2(a), (b), or (c)

Question 28

Cancellation: grounds available AFTER 5 years of registration

Answer 28

1. genericness
2. abandonment
3. fraud
4. includes insignia of a government, or includes the name, likeness, or signature of living person without written consent of deceased president or spouse

Question 29

Cancellation: grounds NOT available after 5 years

Answer 29

1. Not inherently distinctive and lacks secondary meaning
2. Trademark is primarily a surname or primarily geographic (§2(e))
3. Trademark is confusingly similar to a trademark that someone else used prior to the registration and continues to use (§2(d))

Question 30

Exclusions from registration

Answer 30

• To obtain TM rights, must have distinctiveness, nonfunctionality, and use
• §2(f): Merely descriptive marks are not protectable unless secondary meaning is shown
• §2(e)(5): Functional matter is not protectable
• §2(d): Priority of use
• §2(a): No TM by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature UNLESS:
  (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…

Question 31

Park ‘N Fly

Answer 31

Incontestability case
1. Rule: An incontestable mark may enjoin an infringing mark even if the original mark is merely descriptive.
2. Once a mark becomes incontestable, even if it is merely descriptive, it cannot be challenged on the basis of descriptiveness.
3. Incontestability = 5 years of registration
4. Secondary meaning = 5 years of use

Question 32

Matal v. Tam

Answer 32

1. Rule: The disparagement clause 2(a) of the Lanham Act violates the First Amendment’s free speech clause
2. You can’t deny registration simply because it was used as a derogatory term
3. Prior prohibition against immoral or scandalous marks found UNCONSTITUTIONAL

Question 33

Iancu v. Brunetti

Answer 33

1. Same as Matal: 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech
2. Based on speaker’s viewpoint, not neutral restrictions
3. The law’s facial viewpoint bias has led the PTO to apply the statutory bar in viewpoint-discriminatory ways, rejecting marks that are deemed offensive by conventional moral standards and registering marks that align more closely with accepted societal views.

Question 34

Incontestability

Answer 34

1. Key prereq: the registered mark has been in “continuous use” for 5 years from the date of registration, and that it remains in use at the time the incontestability is claimed
2. Property interest will be safe from attack unless he makes registration vulnerable through his own actions or he was never entitled in the first place
3. If mark is incontestable, must still prove liability (likelihood of confusion)
4. Incontestable = presumed to be relatively strong mark, but it does not make a weak mark strong

Question 35

Incontestability: Defenses (33(b))

Answer 35

If one of these defenses is established, registration consitutes only prima facie and NOT conclusive evidence of owner’s right to exclusive use of the mark
1. fraud
2. abandonment
3. mark being used to misrepresent source
4. name, only to describe goods or geographic origin
5. antitrust violation
6. mark is functional
7. equitable principles are applicable (laches, estoppel)