While a “trademark” has a certain level of protection from the moment the mark is first used in commerce, without being registered on the federal or state level, there are several significant advantages to federal registration. To register a mark with the U.S. Patent and Trademark Office (USPTO), the mark must first meet certain eligibility requirements.
Purpose of Trademark Law
A “trademark” is any word, name, symbol or device, or a combination thereof, that identifies and distinguishes the source of goods or services. The Lanham Act is the federal law on trademarks. In general, the main purpose of trademark law is to protect consumers from deceptive and misleading use of trademarks in the marketplace. The Lanham Act enables consumers to identify the source of the goods or services to ensure that they are receiving consistent and preferred quality. This federal law also protects trademark owners against unfair competition by preventing competitors from using the same or a similar mark to sell their own goods or services.
Eligibility for Federal Registration of Trademarks
In order to receive nationwide protection, a trademark must meet certain eligibility requirements for federal registration with the USPTO. Two threshold requirements include that the trademark is “distinct” and that it will be used in connection or affect goods/services in “interstate commerce,” or that cross state lines. The Lanham Act provides that no trademark shall be refused registration unless the mark is:
The same or similar to an existing mark on similar or related goods or services;
Immoral, deceptive or scandalous;
Disparaging or falsely suggestive of relationships with persons, institutions, beliefs or national symbols;
A governments’ flag or coat of arms;
Merely descriptive or deceptively misdescriptive;
Geographically descriptive or misdescriptive;
Primarily a surname; or
A name, portrait or signature identifying a living person without their consent or of a deceased U.S. President during the life of his widow without her consent.
Distinctiveness of Trademarks
In order to qualify for registration, a trademark must be “distinct,” and thus capable of distinguishing particular goods or services from others. For this reason, it is important to select a mark that is not too generic. Categories of marks may include:
Fanciful – invented words for goods or services (e.g., Kodak for cameras)
Arbitrary – common words that do not describe goods/services (e.g., Apple for computers)
Suggestive – words that suggest but do not describe goods/services (e.g., Nickelodeon for children’s television program)
Descriptive – words that describe the goods/services (e.g., Personal Finance for a financial investment magazine)
Generic – names of the good/service itself (e.g., Aspirin)
Fanciful, arbitrary and suggestive marks are typically considered to be inherently “distinct.” Descriptive marks will only receive protection by “becoming distinct,” where the owner can show that there is a common secondary meaning of the mark that is held by the public. Generic marks will never receive trademark protection.
The USPTO Official Gazette
Once the basic eligibility requirements for federal registration are met and the application has been accepted by the USPTO, the trademark will appear in the USPTO’s weekly publication, the “Official Gazette.” The purpose of the Official Gazette is to announce trademarks as candidates for federal registration. This publication provides existing trademark owners with the opportunity to object. Upon an objection the USPTO will hold a hearing to resolve the dispute. If there is no objection, the USPTO will respond to the application. If accepted, the trademark will be placed on either the Principal Register or the Supplement Register.
Principal and Supplement Registers for Trademarks
An eligible trademark may be registered with the USPTO on either the Principal Register or the Supplement Register. Generally, the Principal Register grants all of the rights and protections that are typically associated with trademarks. Registering a trademark on the Principal Register offers the following advantages:
Validity of the mark and established ownership of the registrant;
The trademark owner has exclusive rights in its use;
Nationwide protection from infringement (vs. state or common law protection);
Broad protection for “related” products or services;
Far-reaching judicial remedies and availability of substantial damage awards;
The mark may become incontestable (of the highest status) after five years.
The Supplement Register is designed to provide some protection for descriptive marks that have not yet acquired a secondary meaning. The Supplement Register still places others on notice of the use of a mark and can be used as evidence of ownership in an infringement action. However, unlike the Principal Register, a mark must already be used on goods or services in commerce to be placed on the Supplement Register and the bona fide “intent to use” the mark will not suffice.
Duration of Trademarks
Trademarks placed on the Principal Register are good for 10 years with the indefinite option to renew. However, the owner must file a “Declaration of Continued Use in Commerce” within six years after the registration in order to prevent their registration from being cancelled.