Trademarks 101 Part 2: The Benefits of Federal Registration

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Andrew Stockment is an attorney in Charlottesville, VA. He advises businesses and business owners on a variety of matters, with a concentration on intellectual property, commercial transactions, and business law. Mr. Stockment's additional publications are available at: www.andrewstockment.com.

Although unregistered trademarks receive some protection under the common law and under the Lanham Act, 15 U.S.C. §§ 1051 et seq., trademarks can be further protected through registration under both state and federal laws. Federal trademark registration provides significant additional substantive and procedural rights.

Each federal trademark application must indicate one or more classes of goods or services in which the mark is used. The classification system includes 34 classes of goods and 11 classes of services. In addition, the application must identify the specific goods or services within the class on which the mark is used. The distinctiveness of a mark is measured based on this classification and description.

An applicant obtains a federal registration by filing an application with the United States Patent and Trademark Office (USPTO). Federal registration can be on one of two registers—the Principal Register and the Supplemental Register. The Supplemental Register is for registration of potential marks that are capable of distinguishing the applicant’s goods or services but are not inherently distinctive and have not yet acquired a “secondary meaning” in the mind of the public as an identifier of the specific provider of goods or services. Consequently, until a merely descriptive mark “acquires distinctiveness,” it can only be registered on the Supplemental Register.

Registration on either register provides a number of benefits, including: (i) it grants the right to use the registered trademark symbol: ®, (ii) it grants the right to file a trademark infringement lawsuit in federal court and to obtain monetary remedies, including infringer’s profits, damages, costs, and, in some cases, treble damages and attorneys’ fees, (iii) it acts as a bar to the registration of another confusingly similar mark, and (iv) it may serve as the basis for an international trademark application.

Registration on the Principal Register provides additional benefits, including: (i) a statutory presumption that (a) the mark is valid, (b) the registrant is the owner of the mark, and (c) the registrant has the exclusive right to use the registered mark; (ii) the registration is proof that the mark has acquired secondary meaning; (iii) the registration serves as constructive notice of a claim of ownership, eliminating any justification or defense of good faith adoption and use made by a third party after the registration date; (iv) the registrant is entitled to nationwide priority based on the filing date; and (v) the registration becomes incontestable after five years on the Principal Register, creating conclusive evidence of the registrant’s exclusive right to use the mark, subject to certain statutory defenses.

There are five bases for federal registration: (1) actual use in commerce; (2) intent to use in commerce; (3) claim of priority based on a foreign application; (4) foreign registration; and (5) an extension of protection under the Madrid Protocol. The intent-to-use procedure gives the applicant the benefit of constructive-use priority based upon the application date, but an intent-to-use application cannot be registered on the Supplemental Register.

The Lanham Act defines commerce as any commerce that may lawfully be regulated by Congress, and it defines use in commerce as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” In most cases, use in commerce requires interstate use or use between the United States and a foreign country, and purely intrastate use generally will not qualify a mark for federal registration.

After a mark is registered, the ownermust protect the mark by properly using the mark and by monitoring use of the same or confusingly similar marks by others. To maintain the federal registration, the owner must periodically pay maintenances fees and file declarations of continued use and renewal applications.

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