Trademarks

Traditionally, trademark rights had depended on prior use, but since 1988 a party with a genuine intent to use a mark may apply for trademark registration. The applicant must intend to use the mark in commerce and must intend to do so in order to sell a product, not merely to reserve rights for future use.

Registration begins with application to the commissioner of patents and trademarks in the PATENT AND TRADEMARK OFFICE. Registration of a mark means that others will be presumed to know that the mark is owned and protected. By itself, registration is considered evidence that the registrant has ownership and that the registration is valid.

Registration benefits the trademark owner because it suggests that the registrant did everything necessary to protect its mark. While trademark rights actually stem from use, a party may have difficulty convincing a court that it had good reasons to not register a mark for which it now claims a protected right. This is particularly so when a claimed symbol's status as a trademark is uncertain, such as in a dispute over the design of a product as a trademark.

One may apply with either the principal register or supplemental register of the Patent and Trademark Office. The principal register is for arbitrary, fanciful, suggestive, or descriptive marks that have acquired secondary meaning or distinctiveness. The supplemental register is for descriptive terms capable of acquiring secondary meaning. Once a mark establishes secondary meaning, it can be transferred to the principal register.

Registration with the principal register is preferable to supplemental registration for many reasons. Principal registration is proof that the mark is valid, registered, and the INTELLECTUAL PROPERTY of the registrant, which has exclusive rights to use the mark in commerce. Further, a registered mark is presumed to have been in continuous use since the application filing date. After five years of continuous use, a registered mark may not be contested. Registration with the principal register means that a potential infringer will be considered to know about the registrant's claim of trademark ownership. The owner of a mark registered with the principal register has the right to bring suit in federal court. Those who counterfeit registered marks face criminal and civil penalties. The owner of a trademark that registers with the principal register and deposits the registration with the U.S. Customs Service can prevent goods bearing infringing marks from being imported.

A mark on the supplemental register may become a trademark, but its status as such has not yet been determined. For this reason, the presumption created by registration with the principal register, that the registrant can be the only valid owner, does not apply to supplemental registration.

The owners of registered trademarks can lose their rights in a number of ways. When a trade or the general public adopts a trademark as the name for a type of goods, the mark is no longer distinctive and the rights to it are lost. The owner of trademark rights must be vigilant to ensure that this does not occur. For instance, the Rollerblade company introduced a new product of roller skates where the wheels are arranged in a single line (offering performance similar to the blade on an ice skate) rather than side by side. Initially Rollerblade was the only company selling this type of skates, and the name Rollerblade became widely known. When competing producers of this new skate emerged on the marketplace, the consuming public often used the word rollerblade to describe the type of skates, no matter what company was making and selling them. Further, the public often called the activity of using such skates, no matter the manufacturer, rollerblading. The Rollerblade company spent millions of dollars in advertising and lawsuits to ensure that the trademark Rollerblade was not used to describe a product whose proper generic name is in-line skates. To protect its rights to the trademark, the Rollerblade company must actively oppose any use by competitors or consumers of the words rollerblade or rollerblading to describe generic in-line skates and the activity of in-line skating.

Registrants forfeit rights to their marks if they use them deceptively, use them in fraudulent trades, or abandon them. Registrants abandon their marks by failing to renew within ten years or by deliberately transferring rights with consent.