7. What about federal registration of a mark?

Registering a trademark or service mark with the U.S. Patent and Trademark Office (PTO) makes it easier for the owner to protect it against would-be copiers, and puts the rest of the country on notice that the mark is already taken. The registration process involves filling out a simple application, paying an application fee ($325, current in August 2002) and being willing to work with an official of the PTO to correct any errors that he or she finds in the application.

To qualify a mark for registration with the PTO, the mark’s owner first must put it into use “in commerce that Congress may regulate.” This means the mark must be used on a product or service that crosses state, national or territorial lines or that affects commerce crossing such lines—such as would be the case with a catalog business or a restaurant or motel that caters to interstate or international consumers. If an intent-to-use application is being filed (the applicant intends to use the mark in the near future but hasn’t begun using it yet), another document must be filed for a fee once the actual use begins, showing that mark is being used in commerce (as defined above).

Once the PTO receives a trademark registration application, it determines the answers to these questions:

• Does the application have to be amended (because of errors) before it can be examined?

• Is the mark the same as or similar to an existing mark used on similar or related goods or services?

• Is the mark on a list of prohibited or reserved names?

• Is the mark generic—that is, does the mark describe the product or service itself rather than its source?

• Is the mark descriptive—that is , does it consist of words or images that are ordinary or that literally describe one or more aspects of the underlying goods or services?

When the PTO can answer all of these questions in the negative, it will publish the mark in the Official Gazette (a publication of the U.S. Patent and Trademark Office) as being a candidate for registration. Existing trademark and service mark owners may object to the registration by filing an opposition. If this occurs, the PTO will schedule a hearing to resolve the dispute. Even if existing owners don’t challenge the registration of the mark at this stage, they may later attack the registration in court if they believe the registered mark infringes one they already own.

If there is no opposition, and use in commerce has been established, the PTO will place the mark on the list of trademarks known as the Principal Register if it is considered distinctive (either inherently or because the applicant has shown that the mark has acquired secondary meaning). Probably the most important benefit of placing a mark on the Principal Register is that anybody who later initiates use of the same or a confusingly similar mark will be presumed by the courts to be a “willful infringer” and therefore liable for large money damages. However, it is still possible to obtain basic protection for a mark from the federal courts under the Lanham Act without prior registration.

If a mark consists of ordinary or descriptive terms (that is, it isn’t considered distinctive), it may be placed on a different list of trademarks and service marks known as the Supplemental Register. Placement of a mark on the Supplemental Register produces significantly fewer benefits than those offered by the Principal Register, but still provides notice of ownership. Also, if the mark remains on the Supplemental Register for five years—that is, the registration isn’t cancelled for some reason—and also remains in use during that time, it may then be placed on the Principal Register under the secondary meaning rule (secondary meaning will be presumed).

Related terms: abandonment of mark; Amendment to Allege Use; certificate of registration; commerce; Commissioner of Patents and Trademarks; concurrent registration; constructive notice of mark under Lanham Act; continuous use of mark; duration of federal trademark registration; foreign nationals, registering in U.S.; incontestability status; inter partes proceeding; interference; International Schedule of Classes of Goods and Services; notice of trademark registration; Official Gazette; opposing and cancelling a trademark registration; presumption of ownership; Principal Register; prohibited and reserved marks under Lanham Act; right of publicity; same or similar mark; Sections 8 and 15 Affidavit; Statement of Use; Supplemental Register.