Archives For trademark registration

Why the USPTO Supplemental Register Matters to You

June 24, 2014 — 2 Comments

If you’ve explored the trademark database maintained by the U.S. Patent and Trademark Office you might have seen some marks filed on the “Supplemental Register” rather than the “Principal Register.” While the differences may not seem too great on their face, the rights associated with each registry are quite different.

The Principal Registry

The Principal Registry is a registry of federally protected trademarks. Once registered, a mark owner may:

  1. Begin using (R) on the registered mark;
  2. Obtain greater damages in an infringement action;
  3. Use the registration to seek protection in foreign countries;
  4. Use the registration to prove constructive notice of ownership; and
  5. File for incontestable status after five years.

The Supplemental Registry, on the other hand, doesn’t offer all of those benefits.

The Supplemental Registry

The most common reason a mark ends up on the Supplemental Registry is because it was rejected for the Principal Registry due to a number of reasons such as descriptiveness or use of a surname or geographical term.

Unfortunately, the owners of marks on the Supplemental Registry only receive benefits 1, 2, and 3. Those owners can’t use the registration to show constructive notice and they can’t seek incontestable status. Further, their acceptance of the Supplement Registry implies they know their mark is week due to descriptiveness or another registration hurdle. Thus, the registration might scare away some potential infringers, but it won’t help too much in any infringement litigation.

The key requirements to obtain a Supplemental Registry registration are quite simple: the owner must be using the mark in commerce and it cannot be generic because generic terms don’t have the effect of serving as a source identifier.

What You Should Consider

If your mark isn’t suitable for the Principal Registry, you should consider seeking protection on the Supplemental Registry because even a Supplemental Registry registration can be used to scare off potential infringers. However, it should be remembered that if you are trying to build a brand based on your mark, the Supplemental Registry isn’t a good long-term tool to achieve that goal. Rather, you should begin using a brand/mark that is protectable on the Principal Registry to better protect your rights and the real value of your brand.

If you want to learn more about trademark law, be sure to sign up for Mighty Updates, our monthly email newsletter!

Image: Thinkstock/Vladimirs

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Law , , , ,
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Have Your Pi and Trademark it Too

June 10, 2014 — Leave a comment

A Brooklyn artist recently upset geeks and t-shirt merchants with a recently approved federal trademark registration on a 3,000-year-old Greek symbol.

In late 2012 Paul Ingrisano applied for a federal trademark registration for the Pi symbol followed by a period in connection to “athletic apparel, namely shirts, pants, jackets, footwear, hat and caps, [and] athletic uniforms.” After correcting some minor errors with the application he successfully obtained a registration for the mark in early 2014.

Within months of obtaining the registration, Ingrisano began enforcing his newly acquired rights. His first big target was Zazzle.com, a website where users can sell goods like shirts and mugs featuring designs created by the users.

In his cease and desist demand letter Ingrisano’s lawyer makes the case that the sale of apparel on Zazzle.com featuring the Pi symbol is likely to confuse consumers as to the source of the goods being sold (the essential element of proving trademark infringement). The letter then goes on to make multiple demands regarding inventory, evidence of sales, and various accountings.

Zazzle’s initial reaction was to remove all potentially infringing materials for fear it might be indirectly liable as the middleman between the creators of the potentially infringing goods and the end consumers. However after receiving complaints from the creators, a Zazzle representative told cnet.com “After reviewing the takedown request more closely, Zazzle has decided to restore the ‘Pi’ products. Zazzle is a marketplace for a community of artists, and we want to continue to support artists who are creating original artwork.”

Zazzle didn’t elaborate further, but several things in the cease and desist letter seemed a bit off. First, the letter requests Zazzle cease and desist all “copyright infringement” when the matter at hand is a trademark. Remember, copyrights tend to protect creative works while trademarks tend to protect names and slogans.

Second, it is unclear if Ingrisano is seeking to prevent others from using the Pi mark or the Pi mark plus a period. The essential question is whether consumers purchasing goods on Zazzle would be confused as to the source of the goods and believe they were coming from Ingrisano when, in fact, they were not. That raises the question as to the importance of the period in the Pi registration – a question that would likely have to be decided by a jury.

This registration and Ingrisano’s attempt to protect the Pi symbol with a period will undoubtedly raise many eyebrows in the coming months and years and we’ll let you know when new developments arise.

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Image Credit: uspto.gov

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

 

In Trademark Disputes, Trademark News , , , ,
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5 Keys to Protect Your Trademark

April 22, 2014 — 8 Comments

Last week we wrote about What Everybody Ought to Know About Trademark Law and this week we will dive deeper to explain how to obtain and protect your rights. We’ll cover how trademark rights stem from use, why common law rights have geographical limitations, how marks are associated with specific goods or services, why only distinctive marks may be protected, and why trademark registrations are encouraged.

1. Common Law Rights Stem From Use

Generally speaking, you must use your mark in commerce before you may seek protection. As an example, say Evan begins marketing his new coffee shop, Evan’s Coffee Shop, in May and opens for business on July 1. His date of first use is July 1 and he can then begin using the ™ symbol.

2. Geographical Limitations

Common law trademark rights are limited to geographical areas. For example, if Evan’s Coffee Shop is in Chicago, he can prevent other coffee shops in Chicago from using the name “Evan’s” with respect to coffee shops. However, his rights don’t extend to San Francisco because his rights are limited to Chicago and nearby areas where he is likely to expand.

3. Goods or Services Limitations

Trademark rights only extend to specific goods and services. In Evan’s case, the operation of a coffee shop is his service. Thus, if another Evan opens Evan’s Auto Shop in Chicago, our friend Evan couldn’t prevent the auto shop from using the name Evan. But, Evan can stop others from using the name “Evan’s” in connection to other coffee shops and perhaps also in connection to similar businesses like bakeries. A good example is Delta, which could mean faucets or an airline. That dual use is allowed because it is unlikely consumers will think their Delta pilot is actually a faucet salesman.

4. Distinctive Requirement

Marks may not be protected unless they are distinctive and capable of identifying a particular source of the good or service. A mark which is arbitrary or suggestive is likely distinctive and can usually receive protection. However, if a mark is descriptive or generic, protection is harder to obtain.

In Evan’s case, his name in relation to the sale of coffee is arbitrary and, assuming there are no other barriers, he can likely protect “Evan’s” in relation to the sale of coffee. However, “coffee shop” is descriptive and generic and, therefore, he cannot protect that portion of his mark.

5. Registration is Encouraged

We mentioned above that common law rights are limited to specific geographic areas. Luckily for Evan, he can obtain nationwide rights with a federal registration with the United States Patent & Trademark Office (he also has the option to register at the state level). Once registered he can use the ® symbol and he will have nationwide protection and also a legal presumption that he owns the mark.

Register Your Mark!

If you want to register your mark be sure to visit MightyMarks.com to learn how we can help you obtain your registration!

Image: Thinkstock/Silvia Antunes

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Law , , , ,
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