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450 TRADEMARKLAWmethod is based on certain international agreements, by
which applicants outside the United States can file an ap-
plication based on applications or registrations in another
country.
The Supplemental Register is where marks that are
descriptive in nature but have not yet established sec-
ondary meaning are maintained. Marks on the Sup-
plemental Register can use the©R symbol, and if the
mark is continuously used and unchallenged for 5 years,
the holder may file another application and claim such
use presumptively establishes secondary meaning under
Section 2(f) of the Lanham Act, and thereby move the
mark onto the Principal Register.
The registration process itself is relatively straightfor-
ward. The application documents must be filed by the
owner of the mark, usually through the services of an at-
torney concentrating in trademark law. (For brevity this
chapter focuses only on an “in use” application and does
not discuss further the “intent to use” application.) The
application contains information about the individual or
corporation that owns the mark, an exact representation
of the mark (in text or in image form), as well as several
specimens of the mark in actual use, information about
the date of first use and date of first use in commerce of
the mark, a description of the goods or services used in
conjunction with the mark, and the “classification” of the
goods or services according to a standardized list of 42
predefined classifications. Some goods and services may
be registered in multiple classes, with the application fees
increasing accordingly.
Once received, the USPTO makes an initial review of
the application to determine if the application contains all
the information necessary to be considered “filed.” If the
application is complete, a “filing date” is issued along with
a serial number and sent to the applicant. Several months
after filing, an examiner at the USPTO reviews the applica-
tion in more detail, researches the information provided,
and makes a determination as to whether the mark should
be registered. If it cannot be registered, the examiner will
issue a notice called an “office action,” which explains the
grounds for refusal, including any deficiencies in the ap-
plication itself. In some cases, only minor adjustments
might be necessary to permit registration, and sometimes
the application can be corrected over the phone. Appli-
cants have six months to respond to an office action be-
fore the application is considered abandoned. If the ap-
plicant cannot overcome the examiner’s objections, a final
office action is issued, at which point the applicant may
appeal to the Trademark Trial and Appeal Board. Should
the applicant be unsuccessful there, that decision may be
appealed to federal court.
If there are no objections to the application, or the ap-
plicant overcomes the objections, the examiner will ap-
prove the mark for publication in theOfficial Gazette,a
weekly publication of the USPTO. The applicant is noti-
fied of the date of publication through an official Notice
of Publication.
Anyone who believes the registration harms him or her
or that it is otherwise in violation of the Lanham Act has
30 days from publication to file an opposition to the regis-
tration or seek an extension of time to do so. At this point,
the administrative proceeding isinter partes(meaningbetween two parties, in contrast to anex parteproceeding
before the examiner only) and is known as an “opposi-
tion.” The opposition proceeding determines the validity
of the objections. If no objection is received, the mark will
be registered. After the registration is issued, anyone who
believes himself or herself to have been harmed by the reg-
istration may begin a “cancellation proceeding,” which is
similar to an opposition proceeding except that it takes
place after registration. In an opposition, the applicant
bears the ultimate burden of establishing registerability;
in a cancellation, the party seeking the cancellation bears
the burden of proving the registration was improvidently
issued. Opposition and cancellation proceedings are held
in a formal, trial-like hearing before the Trademark Trial
and Appeal Board, a division of the USPTO.
A mark will be registered only after it has been pub-
lished and the opposition period has expired. Once reg-
istered, federal trademark registrations run for 10 years,
with renewal terms lasting 10 years. Between the fifth and
sixth year, however, the registrant must file an affidavit to
confirm the mark is still in use. If that affidavit is not filed,
the registration is cancelled. Thus, a trademark must re-
main in use or its registration may be cancelled, but if a
mark is in continual use and that use is properly demon-
strated as required by law, the registration could remain
effective forever.
After five years, the owner of a registered mark may re-
quest that the mark be deemed “incontestable.” Under the
Lanham Act, incontestability means that certain legal av-
enues of challenging the mark-such as a claim that the
mark is not distinctive, lacks secondary meaning, is con-
fusingly similar to another mark, or the mark is purely
functional—are no longer available. The term “incon-
testable” is somewhat misleading in that there remain cer-
tain circumstances in which the mark may be challenged
and have the registration cancelled, such as an assertion
that the mark was improperly registered in the first in-
stance.The Differences Between©R,TM, andSM
Once registered, the registration symbol,©R, may be used.
It is considered trademark misuse to display the regis-
tration symbol at any point before the USPTO issues the
final registration notice to the applicant. In contrast, any-
one who wishes to claim rights in a mark may use the
TM(trademark) orSM(service mark) designation along side
the mark. Use ofTMorSMalerts the public to the claim of
ownership and exclusive use. It is not necessary to have a
registration, or even a pending application, to make use
of these designations, and consequently the claim may or
may not have any validity. In short, use ofTMorSMtells
the world that the party using the trademark is prepared
to put up a fight.STATE STATUTES AND
COMMON LAW
Many states also have trademark registration statutes that
allow registration of marks used in intrastate commerce,
using procedures that function similarly to the USPTO
process defined by the Lanham Act. In addition, all states