Registration

Registration has its benefits. As with copyright registration, it is not mandatory that one register one’s mark in order to receive protection, but it is advisable. Nonetheless, registration does complicate matters a bit.

Anyone can use the letters “TM” to claim rights in a trademark (or “SM” for a service mark) (subject to state or local laws), without having registered. But in order to use the trademark symbol ®, the mark must be registered in accordance with §1051. For a registered mark, one can choose between the well-known symbol or two alternatives: “Registered in U.S. Patent and Trademark Office,” and “U.S. Pat. & Tm. Off.” Note that these are merely permissive, and not mandatory, and can only be used once registration is complete.

However, a registered mark user who does not attach the symbol or one of the phrases to his use of the mark will find herself potentially disappointed. Under §1111, which covers notice of registration and display with marks, a registered trademark owner who fails to display the permitted symbols, etc., will be unable to recover for profits or damages without showing that the defendant had actual notice of the trademark.

EXAMPLE: Lisa has developed a new drink which she calls “Liser’s Liquor.” She thinks the drink will be a big hit, so she begins production of her new creation. She registers her trademark, but because she had already ordered several thousand labels without the optional symbol or language, her goods are sold without this notice. Even if she sues an infringer and wins, the best she can hope for is that the court will enjoin further infringement, unless Lisa can show that the infringer knew about Lisa’s registration.

Registration on the Principal Register

Trademark registration begins with an application filed with the Patent & Trademark Office (“PTO)”). This can be done electronically through the Trademark Electronic Application (TEAS). In addition to permitted use of the symbol/language discussed above, there are several distinct advantages to trademark registration:

• Provides constructive notice of the user’s claim to the mark.
• Protection against infringement from the date of application.
• Serves as evidence of ownership.
• Permits claims to be brought in the federal courts.
• Permits parties to seek treble damages.
• Can serve as the basis for registering the mark abroad.
• Helps prevent infringing goods from being imported, by filing with customs.

As of 2017, an electronic trademark application costs between $225-$400. If the application is accepted and the trademark registered by the PTO, the certificate issued serves as prima facie evidence

“of the validity of the registered mark and of the registration of the mark, of the registrant's ownership [and] exclusive right to use the registered mark….” -§1057(b).

§1051 lays out the statutory requirements for registration, but for the practical requirements, a visit to the PTO website will provide quick and easy answers to most questions an attorney or paralegal might have regarding the logistics of registration (e.g., the need to provide an actual example of the mark to be registered, etc.).

Registration on the Supplemental Register

So, we can have an unregistered trademark or a trademark registered on the principal registry. But there is also a supplemental registry, covered by §§1091–1096. In order to go on the supplemental register, a mark need not actually distinguish goods but rather need only be “capable of distinguishing” goods. Many marks which are not eligible for registration on the primary register, such as descriptive terms, geographic names, surnames, etc., can be registered here. There is no intent-to-use registration available for the supplemental register, and many of the benefits of the primary register do not apply.

Interestingly, if a user tries to register a mark on the supplemental register, but the mark qualifies for registration on the primary register, registration on the supplemental register can be refused. See In re Hunt, 132 U.S.P.Q. (BNA) 564 (TMT App Bd 1962).

The main benefits of supplemental registration, when primary registration is unavailable, are the ability to sue in federal court and seek treble damages. These advantages exist, however, only if the plaintiff can demonstrate all the elements of trademark ownership required under common law, because the supplemental register does not generally offer any rights not available under common law. See Armstrong Paint & Varnish Works v. Nu-Evamel Corp. 59 S.Ct 191 (1938); Clairol, Inc. v. Gillette Co. 389 F.2d 264 (2nd Cir. 1968).

Maintaining a Registered Trademark

As with most of our most cherished possessions, trademarks need continued upkeep in order to maintain their maximum value. Fortunately, the Title 15 provisions on maintenance and renewal of trademarks are fairly straightforward:

• §1058(a) sets out an initial duration of 10 years for trademark registration.
• §1058(b) tells us that the trademark owner must file an affidavit of use after 5 years following the registration, but before six years (i.e., there is a 1 year window in which this must be filed, which begins 5 years following registration. If this is not filed, the registration will be canceled at the 6 year mark.
• §1059 permits renewals for 10 year terms beginning 1 year prior to the end of the previous term. There appears to be no limit on how many renewals a mark can go through. That is, a mark could theoretically stay on the register indefinitely.

EXAMPLE: On April 1, 2007 the mark “Duncan’s Dump Service” is registered for a trash hauling company. Sometime between April 1, 2012 and March 31, 2013, an affidavit of use must be filed in accordance with §1058(b). If the affidavit is not filed, the registration will be cancelled on March 31, 2013. In order to renew the mark, a §1059 filing (along with a fee, of course) must be submitted between April 1, 2016 and March 31, 2017. Otherwise, the registration will expire on March 31, 2017.

Note that cancellation of a mark due to a §1058(b) failure, or non-renewal of a mark under §1059, does not make the mark invalid. It might, however, constitute prima facie evidence of abandonment (see below). See Primrose Foundations, Inc. v. F.W. Woolworth Co., 113 U.S.P.Q. 232 (N.Y. Sup. 1957).

Most importantly, there is no reason for your client’s mark to be removed from the register simply because someone failed to adhere to the simple requirements set forth in §§1058–1059. The requirements are simple, and the procedures are easily carried out.