PRINCIPAL TRADEMARK REGISTER

The US Patent and Trademark Office maintains two registers for trademarks.  There is the Principal Trademark Register (which is where you want to be).  There is also the Supplemental Trademark Register.  Registration on ether register entitles the owner to place the ® symbol immediately after the mark, i.e., Kodak® camera.  

To be eligible for registration on the Principal Trademark Register, the mark must be distinctive.  This topic is discussed in  Trademarks. 

The term of a trademark registered on the Principal Register after November 16, 1989 is for an initial term of 10 years.  However an affidavit (so called Section 8 and 15 affidavit) must be filed within the first six years to confirm the mark is still in use.  The trademark can be renewed for additional 10-year terms by filing a “Section 9 affidavit.”

Why do you want your mark registered on the Principal Trademark Register?  The process is expensive.  The current filing fee is $325.00 for each mark per classification of goods or services.  (Assume that if you intend the mark for multiple products and services, you will be paying for multiple classification.)  The filing of a trademark application is relatively straight forward and there are self help books that describe the process in detail.  If the application is initially rejected, which is not uncommon, the process becomes more complex.  The process is also somewhat lengthy, i.e., 1 to 2 plus years. 

Registration on the Principal Register conveys the following rights:

·        Presumption of ownership.

·        The exclusive right to use the mark throughout the US (subject only to the prior right of an entity, if any, that was using the mark in a particular locality at the time you registered your mark).

·        Right to bring an action to enforce trademark rights in Federal Court.

·        Right to receive treble damages.

·        After 5 years of registration, the mark is deemed in contestable.  (In most cases, this means the mark is not subject to a petition for cancellation filed by a third party in the USPTO.)

Registration of a trademark that is also used as a domain name enhances your claim of ownership of the domain name.

It is worth noting that the US trademark laws provided additional protection for “famous mark”.  The owner of a famous mark is entitled to stop (“enjoin”) the use of similar marks even if there is no possibility that consumers will be confused as to the origin of the goods or services.  In contrast, a showing of a likelihood of confusion in the minds of consumers as to the origin of the goods is required to enjoin or stop the use of a similar trademark not meeting the criteria of a famous mark.

Fair Use: As an exception to the trademark owner’s exclusive right to use the mark in the relevant market, the doctrine of fair use permits others to use the mark.  Examples of permitted “fair use” include parodies or similar humorous use of the mark, use of the mark in comparative advertising, and news accounts.  Another important category of permitted fair use of a trademark owned by another is in advertisements of a third party merchant stating that it offers goods or services subject of the mark.

Incontestability of marks: A trademark becomes immune to legal challenge after being registered on the USPTO Principal Register for five years.  This is subject to the article 8 and 15 affidavits (discussed above) having been filed, that there has been no ruling that the mark is invalid and there is no challenge pending.  Further, the trademark owner must be able to show that the mark has not become generic, i.e., that it now commonly used to describe an entire class of products or services, and not just the products and services of the trademark owner.  (“Escalator” is an example of a trademark that has become generic.  “Xerox” and “Kleenex” are examples of trademarks that, for a time, had come in danger of being generic due to the widespread use by the public in describing the entire class of services or products, i.e., photocopying and facial tissue.)

Trademarks and Internet Domain Names: Note that the registration of trademarks has taken added significance with the advent of Internet domain names.  There are often multiple companies operating with similar names or similar product names but in different markets or fields of commerce.  There is however, only one possible registrant each for the top level domain (TLD) “.com”, etc.  This has caused domain names incorporating the trademarks or service marks of major companies to become valuable commodities.  Instances of people registering of domain names of companies or organizations in the belief that they will be able to resell the domain name to the company at a high profit have been well publicized.  This has resulted in the term “cyber-squatter” being coined.  See Cyber Squatting.  However, recent federal legislation and court decisions are making it increasing clear that cyber-squatting will not be permitted.  An entity that can show an established use of a name, such as via a registered trademark, can block the cyber-squatter from attempting to use the name, or to hold the name for ransom to a legitimate user of the name.  See also Trademarking Domain Names.

One of the tools that the courts have utilized in protecting the rights of owners of trademarks or well known names from the speculative acquisition of domain names incorporating the trademarks or names is the non-dilution provisions of the Lanham Act discussed above.