(Image is from the U.S. government [Public domain], via Wikimedia Commons)
January 7, 2014 By: Jon Cohen, Attorney at Law
Given my practice areas, I’ve been thinking about the “nuts and bolts” contrasts between copyright and trademark (not the “what they protect” but the “how they protect”). Copyright is ALL federal law by virtue of the 1976 Copyright Act’s section 301 preemption section. So when you register your copyright in a work, you do it at the federal level.
Trademark protection is available at both the federal and state levels, and involves both statutory and common-law. You have federal trademark registrations of TWO types (the Primary Register and Supplemental Register), you have state trademark protection under state codes, and you have common-law (case law-based) trademark protection, at least in the abstract. Four theoretical avenues for trademark protection.
This post addresses federal trademark registration to protect a mark for goods or services currently or potentially in interstate commerce. It does not address state trademark registrations or common law trademark protection. Those topics will be considered in future posts. It also skims over some areas that should be examined in depth if you are going forward with a federal trademark registration. When I conceived this post, I wanted to address some of the more confusing (or interesting) related points such as the two federal trademark registers.
Frequently, businesses possess both copyrightable property and trademarks or service marks. Registration of copyrights and trademarks/service marks is generally beneficial. The processes for registration are quite different however. Unlike the registration of a copyright, obtaining a federal registration for your trademark or service mark (I’ll refer to both as a “trademark” or “mark” below) presents the need to make a critical decision regarding the mark itself prior to its adoption and use in business, and an effort to register it.
Too often a business person selects and uses a mark that will not be accepted for registration by the United States Patent and Trademark office (“the PTO”) or the person’s state trademark registration authority (in Ohio, for example, that is the Secretary of State). So while it is frequently unnecessary to hire an attorney to assist in the registration of a copyright, it is generally a good idea to engage an attorney when you are deciding on a trademark you intend to register at the federal (or state) level.
Although it is not absolutely necessary to obtain federal registration for a trademark, a registration on the PTO’s Principal Register (more on that, below) carries significant advantages:
• You are putting the public on notice that you claim ownership in the mark;
• The registration creates a legal presumption of your ownership of the mark and your exclusive right to use the mark with the goods or services described in your registration;
• You may bring an action to protect the mark in federal court;
• You may use the U.S registration as a basis to obtain foreign registrations; and
• You may file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
(From the PTO’s site, here.)
The choice of a trademark is one of the most critical decisions a person going into business will make. Frequently, businesses adopt and use a trademark without an early effort to register it and learn after using it for a long period that it will not be accepted for registration. The PTO’s rejection of a trademark application may be premised on the mark’s falling into one of the Section 1052 exclusion categories (discussed below), or on the fact that the mark would infringe an identical or very similar mark already in use.
In very general terms, a fanciful name that is not descriptive of the product or service to be identified by it makes for the very strongest mark and for one that (absent other preclusive issues) should be accepted for registration by the PTO. This might seem counterintuitive, but marks which are merely descriptive of the goods or services to be identified cannot be registered under federal Trademark Law absent “secondary meaning” (discussed below).
A well-known example of an arbitrary or fanciful mark is the word “Kodak” as a trademark for cameras and photographic equipment. At the time George Eastman adopted this word as his company’s trademark, it had no connection to photographic cameras in the minds of the consuming public. It did not mean “camera” in any language, and it was not a surname of any person connected with the enterprise. It was entirely a “made-up” word whose sound pleased Mr. Eastman. See the discussion of the “Kodak” mark coming into being at the Kodak website, here, under the heading “Advertising.”
On the other hand, those marks that merely describe the goods or services the mark is intended to identify to the public are at the other end of the registrability spectrum from those that are arbitrary or fanciful. If you sell Product X, try to avoid adopting the trademark “The Product X Company.” Only if you can demonstrate the trademark has achieved “secondary meaning”—distinctiveness— in the minds of the consuming public; i.e., that most people are apt to connect the trademark with the product it identifies, will your generic or merely descriptive mark be registrable.
Federal Trademark Registration on the Principal Register
Generally, federal trademark registrations are sought for the PTO’s Principal Register, which affords the greatest protection to the holder of the mark (a brief discussion of the Principal Register and the Supplemental Register follows below). The federal Trademark Act (also known as “the Lanham Act,” 15 United States Code § 1051 and sections that follow; hereafter “the Act”) identifies the spectrum of registrable marks by categorizing those for which registration is barred. A quick note about the Act: it has two numbering schemes, with § 1051 (for example) also being identified as § 1 by the PTO. (The fairly well-known § 43, the statute addressing such unfair competition activity as false designation of origin, is also known by its United States Code citation as 15 U.S.C. § 1125).
Section 1052 of the Act speaks in terms of trademarks generally being afforded registration unless they are:
(a) Marks that include immoral, deceptive, or scandalous content or which suggest an inaccurate connection with, or disparage, a person, institution, belief, or national symbol (or mis-describe a geographical indication for wines or spirits);
(b) Marks using the flag or coat of arms or other insignia of the U.S. or a state or foreign government;
(c) Marks including a name, portrait, or signature identifying a particular living person in the absence of written consent, or the name, signature, or portrait of a deceased U.S. President during the life of his widow, if any, except by the written consent of the widow.
(d) Marks so similar to another mark registered by the PTO or another mark used in the United States by another party and not abandoned they will cause confusion or mistake among consumers, or will deceive them.
(e) Marks that are
(1) merely descriptive or deceptively misdescriptive of the applicant’s goods,
(2) primarily geographically descriptive of them (with an exception for collective and certification marks),
(3) primarily geographically deceptively misdescriptive of them,
(4) primarily merely a surname, or
(5) comprise any matter that, as a whole, is functional.
However, 1052(f) provides a saving clause for those marks that have achieved “distinctiveness” through being broadly recognized as a source indicator for the goods or services identified by the mark. When a mark has acquired “secondary meaning” in the minds of the consuming public; i.e., that mark is generally recognized as pertaining to the goods or services with which it is used, it is said to be “distinctive.”
Section 1052(f) states in relevant part: “Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.” (Emphasis added.)
1052(f) further provides that proof the mark has been in substantially continuous and exclusive use for the five years preceding the date a claim of distinctiveness is made shall be prima facie evidence of such distinctiveness.
Thus, for example, a mark that is “merely descriptive” (and thus barred from registration under 1052(e)(1)) can be shown to have achieved secondary meaning and therefore to have become “distinctive.” Making such a showing to the PTO or the Trademark Trials and Appeals Board can be expensive, however.
Let’s look at how to make things less expensive and easier by selecting the right kind of trademark from the outset. Both the courts and the PTO have recognized a “spectrum of distinctiveness,” most clearly discussed in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2nd Cir. 1976). There, the court commented there are four categories of trademark terms (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The court articulated the common law rule reflected in the trademark acts that a generic term cannot become distinctive and thus a protectable trademark. It noted, however, that a descriptive term could, through secondary meaning, become distinctive with respect to the goods with which it is used.
The Abercrombie court helpfully defined “suggestive” terms and “descriptive” ones:
“A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.”
537 F.2d 4 at 11. The significant difference between these categories (2) and (3), though, is that as the Abercrombie court stated, “[i]f a term is suggestive, it is entitled to registration without proof of secondary meaning.” Id. Regarding arbitrary or fanciful terms, the court stated “[i]t need hardly be added that fanciful or arbitrary terms enjoy all the rights accorded to suggestive terms.” Id.
The “take away” is that suggestive or fanciful trademarks are inherently distinctive, and therefore easily registrable. The overarching point for someone who is at the stage of selecting a trademark is to choose something inherently distinctive rather than something to which distinctiveness has accrued through the passage of time and secondary meaning.
The PTO’s Principal and Supplemental Registers
The PTO maintains two registers of trademarks: the “Principal Register” and the “Supplemental Register.” The Principal Register lists trademarks that have been accepted for registration and to which the full protection of federal trademark law extends. Trademarks that are distinctive as identifiers of their owners’ goods or services are listed on the Principal Register.
By contrast, the Supplemental Register sets forth registered marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant’s goods or services from those of competitors. Thus, for example, a surname is not eligible for registration on the Principal Register, but it may be accepted for registration on the Supplemental Register.
The Supplemental Register is governed by sections 23 to 28 of the Act (15 U.S.C. §§ 1091 to 1096). To qualify for the Supplemental Register, a mark cannot fall within one of the prohibited categories described in § 2 (1052), and it must be in use in commerce.
Registration of a mark on the Supplemental Register entitles the owner to use the ® symbol with the mark, and it precludes registration of similar marks on the Supplemental Register, but it does not afford some of the protections of the Principal Register. Section 1094 lists by statutory section those provisions of the Act that are inapplicable to marks listed on the Supplemental Register. Highlights of the unavailable protections include the incontestability that a Principal Register registration can offer and the inability to block imported articles on the strength of a Supplemental Register certificate. Those interested in the specific exceptions should read § 1094, but it will suffice to say a registration on the Supplemental Register carries few of the potent protections of the Principal Register.
“Intent-to-Use” As a Basis for Filing a Registration Application
There is a method of preserving a right to a trademark prior to adoption and use: an application for registration based on a bona fide “Intent-to-Use” the mark in commerce (the “ITU”). When the Trademark Act was amended in 1988, a procedure was added whereby one intending to use a mark in commerce may apply for registration to formalize that intention. Prior to that amendment, one would have to be using the trademark in commerce at the time the application was being made.
The purpose of the ITU is to establish priority in the ownership of the subject trademark—prior to its registration—as to any similar or identical marks for purposes of an infringement action arising later, after the registration of the trademark. After filing an application based on a bona fide intent to use the mark in commerce, you will receive a Notice of Allowance from the PTO if the mark is accepted. Once the PTO sends you the Notice of Allowance, you have six months to establish actual use through a Statement of Use filing (a period that may be extended a finite number of times through formal requests filed with the PTO).
Use of the “R” Symbol and the “TM” Symbol
It is useful to append a trademark symbol to your mark to provide notice to all that you are protecting the mark. A trademark registered by the PTO may be identified with the appended ® character (as the PTO mentions here). By contrast, a trademark owner asserting state registration-based protection or common law protection can use the familiar “TM” symbol.
I’ll examine other elements of the trademark protection landscape in future posts.