Intellectual Property Law

Chapter 4 Lecture Notes

Major points to be addressed in presenting the chapter materials include the following:

1. Applications for trademark registration (which are nearly always filed online using
the USPTO’s Trademark Electronic Application System [TEAS]) include a variety of
elements, including the following:

• Identification of applicant (individual, partnership, corporation, and so forth), its
citizenship, and address
• Identification of goods and services according to International Class
• Basis for filing the application (if application is filed based on use, actual dates
of first use and first use in commerce are given; if application is based on a bona
fide intent to use the mark, such is stated; if application is based on foreign
application or registration, or is a request for extension of protection under the
Madrid Protocol, such is stated)
• Method of use (applicants are no longer required to specify the method or
intended use of the mark, although the examiner may inquire about such if this is
needed to properly examine the application)

Note: According to recent cases, a mere subjective statement that one has a bona
fide intent to use a mark, without more, is insufficient to establish a bona fide
intent. The absence of any documentary evidence on the part of an applicant
regarding such intent is sufficient to prove the applicant lacks a bona fide intent.
See Honda Motor Co. v. Winkelmann, 90 U.S.P.Q2d 1660 (T.T.A.B. 2009). Thus,
ITU applicants (at least those relying on foreign applications and registrations)
should prepare some form of business plan, marketing plan, etc. before filing an
ITU application.

• Drawing of mark (standard character or special form drawing) in accordance with
USPTO requirements (for example, including a statement that the mark is in standard
characters and no claim is made to any particular font style, size, or color)
• Specimen (if application is based on actual use), consisting of label, tag, or
packaging for goods; and brochure, marketing material, or other written material
for services—only one specimen is now needed, and it is usually submitted using
an electronic image through the TEAS system.
• Declaration and signature (although applicants may file their own applications,
most retain attorneys; a power of attorney is no longer required for an attorney to
sign a declaration on behalf of an applicant, although most law firms continue to
use and file powers of attorney)
• Designation of domestic representative (if a foreign entity is applying, most will
designate an attorney in the United States to serve as its domestic representative)
• Filing fee (which may be paid using a deposit account established with the
USPTO)

2. The application should designate whether applicant seeks registration on the Principal
or Supplemental Register. Registration on the Principal Register is preferred because
it offers a wider scope of protection for the mark. A mark not eligible for protection
on the Principal Register (for example, because it is merely descriptive) may be
registrable on the Supplemental Register.

3. The distinctions between registrations on the Principal and Supplemental Register are
as follows:
• Registration on the Principal Register is prima facie evidence of the registrant’s
exclusive right to use the mark; registration on the Supplemental Register has no
such evidentiary effect

• Registration on the Principal Register is constructive notice of a claim of
trademark ownership so as to eliminate a defense of good faith in an infringement
suit; registration on the Supplemental Register has no such effect

• A registration on the Principal Register may become incontestable; a
Supplemental Registration never achieves incontestable status

• A registration on the Principal Register can be used to bar importation of
infringing goods; a registration on the Supplemental Register cannot be so used

4. A registration on the Supplemental Register does offer some protections:
• An action for infringement of the mark can be brought in federal court
• The mark will be on file with the USPTO and can be cited by the USPTO against
a later application for registration of a similar mark
• The registration can be located through searching techniques so that it may
discourage a later user from adopting a similar mark
• The applicant may use the registration symbol ®

5. After the application is prepared it should be filed with the USPTO with the filing fee
(or instructions to the USPTO to deduct the filing fee from a deposit account with the
USPTO). The USPTO has successfully implemented electronic filing (TEAS) for
trademark applications so applications can be filled out and transmitted electronically
to the USPTO. Nearly all applications are now filed through the electronic TEAS
system, which encourages electronic filing by providing a discounted filing fee for
those filing electronically. Filing electronically also provides the applicant with an
immediate email confirmation of filing (the “success screen”). More than 80 percent of
all applications are filed and processed using electronic communications alone with
no paper documents.

6. Applicants should docket the filing date and track the progress of the application
because applicants have a duty to inquire about the status of an application if they do
not hear from the USPTO within six months of any filing. The filing date also triggers
the start of Paris Convention priority such that the applicant has six months from the
U.S. filing date to file an application in a Paris Convention member country and
capture the date of the earlier U.S. filing.

7. The USPTO will create a file wrapper for the file. File wrappers are now maintained
electronically and documents in these file wrappers can be viewed using the
USPTO’s system TDR.

8. The USPTO will assign the application to an examining attorney who will examine
the application and make a determination as to whether the mark is registrable. If the
examining attorney has objections to the application, he/she will issue an Office
Action that must be responded to within six months or the application generally will
be deemed abandoned.

9. Informal defects and technicalities in the application can often be cured through a
telephone conference (or by email) with the examining attorney. In cases involving
substantive refusals (particularly refusals alleging the mark is merely descriptive or is
confusingly similar to another registered or applied-for mark at the USPTO), the
applicant must provide a written response to the Office Action (which is usually filed
through TEAS).

10. If registration is refused on the basis that the mark is merely descriptive, the applicant
may assert various arguments in support of registration:

• The applicant may argue the mark is not descriptive but is suggestive and is
therefore entitled to registration, supporting the argument with similar marks
found in cases or through a search of USPTO records
• The applicant may argue that the cases cited in the Office Action by the examiner
are inapplicable and may attempt to distinguish those cases from the applicant’s
position
• If the applicant can allege that the mark has been in commerce for five years
(substantially exclusive and continuous use), there is a presumption that it has
acquired distinctiveness; in such a case, the applicant can amend the application
to claim distinctiveness and the application will proceed to publication
• If the mark has not yet acquired distinctiveness through five years of substantially
exclusive and continuous use, the applicant may attempt to prove the mark has
nevertheless acquired distinctiveness or secondary meaning through actual
evidence, namely, its significant sales, use, and advertising such that consumers
immediately recognize the mark as indicating applicant’s goods/services; in such
a case, the applicant will submit sales and advertising data and declarations from
consumers and customers
• The applicant might seek to amend the application to register the mark on the
Supplemental Register (if use of the mark has commenced)

11. If only a portion of the mark is descriptive, that portion may be disclaimed. A
disclaimer is an acknowledgment that the applicant does not claim exclusive rights in
the matter disclaimed.

12. The application may be refused on the basis that it is confusingly similar to another
mark. In determining whether a mark is confusingly similar to another, a variety of
factors are considered, including the following:

• The similarity of the marks as to appearance, sound, connotation, and commercial
impression
• The similarity and nature of the goods/services offered under the respective marks
• The similarity of the channels of trade in which the goods/services are offered
• The nature of the buyers to whom sales are made (for example, whether sales are
made to sophisticated buyers or if purchases are made on impulse)
• The fame of the prior mark
• The number and nature of other similar marks in use on similar goods/services
• Whether there has been any actual confusion between the marks

13. If registration is refused on the basis of confusing similarity, the USPTO will examine
all of the factors and does not use a mechanical approach. When doubt exists, doubt
will be resolved against the newcomer.

14. If registration is refused on the basis of confusing similarity, the applicant may
respond as follows: cite case law and analogize cases in which confusion was not
found; submit evidence showing the goods are not in the same channels of trade and
that they are offered to different purchasers; submit evidence of other similar
registered marks that have been allowed to coexist. Alternatively, the applicant may
contact the owner of the cited mark and seek a license to use its mark or seek consent
to coexistence and registration.

15. If the examining attorney rejects the applicant’s arguments, a final Office Action will
be issued. The applicant can then request reconsideration by bringing new matter
before the examining attorney or appeal the refusal to the Trademark Trial and
Appeal Board. Alternatively, the applicant can initiate an action in federal district
court where the issues will be determined de novo.

16. If the examining attorney agrees with the applicant’s response to the Office Action,
the mark will be approved for publication in the Official Gazette (OG), a weekly
publication of the USPTO, for purposes of opposition by parties who believe they
may be damaged by registration of the mark. Marks on the Supplemental Register are
not published for opposition. They proceed directly to registration after approval by
the examining attorney.

17. If the application is based on actual use, and no opposition is made after publication
in the OG, the mark will proceed to registration after publication.

18. If the application is based on an intent to use the mark in the future, after publication,
the USPTO will issue a Notice of Allowance, granting the applicant six months
within which to commence use of the mark and verify such use to the USPTO with a
specimen. Extensions of time may be granted. The first six-month extension will be
granted automatically. Other extensions are granted only upon a showing of good
cause (such as stating additional time is needed to conduct market research and
promotional activities). In any event, a Statement of Use and specimen must be filed
with the USPTO within 36 months after issuance of the Notice of Allowance.
If an application is inadvertently abandoned due to a USPTO error, an applicant may
file a request to reinstate the application if the delay was unintentional.

19. If use has been commenced as to some goods/services and not as to others, the
applicant should consider dividing the application and proceeding to registration for
the goods/services in use. A separate application will then exist for the goods/services
not in use.

20. If the applicant of an intent-to-use application began use of the mark during the
application process, it may file an amendment to its original application alleging such
use (although an amendment filed after the mark is approved for publication will be
rejected—this is the blackout period).

21. Once a mark that is the subject of an intent-to-use application achieves registration,
the date that is used to determine priority of use between the mark and others is the
filing date of the original application (not the date the mark was actually first used).
This is called the constructive use date and it allows the trademark owner to capture
an earlier date than that of its actual use of the mark.

22. The USPTO will issue a registration certificate. The term of the registration is ten
years. The certificate should be carefully reviewed for errors. If errors exist, a request
should be made to the USPTO for correction.

23. Once the mark is registered, the applicant may use the registration symbol (®). Prior
to registration, that symbol may not be used (although many individuals use the
symbols “TM” or “SM” during the prosecution process).

24. The registration date should be docketed to ensure a renewal is timely filed in ten
years and to ensure that a Declaration of Use is filed between the fifth and sixth years
after registration and every ten years after registration. Failure to file these documents
will result in cancellation of the registration.

25. Applicants may track the progress of their application by using the USPTO’s online
monitoring system (called TSDR) or calling the Trademark Assistance Center at
(800) 786-9199, or (571)-272-9250 if you live in northern Virginia.