Registration

• Jurisdiction: Maryland

XI. REGISTRATION

A. Benefits of Registration

1. Nationwide rights

One of the primary benefits of federal registration is to gain protection throughout the United States. A federally registered mark has priority throughout the country over any mark which was used subsequent to the application date of the registered mark. A registered mark's priority date is the date it applied for registration, not the date it was first used in a region. Thus, a first user in a territory risks that a registered mark may be subsequently used in that territory with priority as the senior user. Other benefits arise from registration:

2. Presumption of validity

A registration on the Principal Register¹²⁷ entitles the registrant to the presumption that the mark is valid for the goods and services listed in the registration¹²⁸ and that the mark is not descriptive or generic.¹²⁹ That presumption can be rebutted, meaning that the registration can be cancelled¹³⁰ and the claimed rights can be negated.¹³¹ There are evidentiary advantages; for example, the registrant is relieved of the burden of proof of nonfunctionality.

3. Imports

A federal registration allows the mark owner to enlist the United States government to help stop the import of infringing goods.¹³² The U.S. Customs Service will only take action to protect registered trademarks, and not common law trademarks.

4. Incontestability

After using the mark for five years and filing the appropriate documentation, the registration becomes incontestable against many challenges, such as descriptiveness.¹³³ Prior to being incontestable, a third party could move to cancel the registration on a number of grounds, including if the mark proves to be descriptive. Grounds for cancelling an incontestable mark are limited, and include fraud, abandonment, prior use, and the mark becoming generic.

5. Use against digital infringement

Various Internet websites and decisions regarding domain names provide greater deference to registered marks in infringement policies and domain name disputes. Online companies have stated that they will take action to stop or suspend allegedly infringing use of a mark if a complainant can show that the mark is registered. Common law trademarks are not afforded this benefit, and the Lanham Act does not prescribe these benefits. These are policy decisions of the websites and arbitration forums, and are benefits exceeding those contemplated by the Lanham Act.

6. Limitation to nationwide priority

Registration does not give the registrant rights to stop usage in a territory where the registrant does not provide goods or services. Under the "Dawn Donut" rule,¹³⁴ a registrant cannot displace a subsequent user in a distant territory until the registrant has actually conducted business in that territory, as there is no likelihood of confusion until the two marks appear in the same territory.¹³⁵

7. Basis for foreign filings

Under various international treaties, having a United States trademark registration enables the registrant to gain priority filing dates in other countries¹³⁶ and to have an easier and more cost effective ability to file trademark applications in a variety of other countries.¹³⁷

8. Use of notice

Registered marks may be used with notice allowed by the Lanham Act.¹³⁸

9. Constructive notice

Registration is deemed constructive notice of a claim of ownership. Third parties are imputed to know what marks are registered and are thus not entitled to a defense of good faith adoption and use of an infringing mark.¹³⁹

10. Enhanced penalties for counterfeiting

The Lanham Act affords registrants the right to obtain treble damages for use of counterfeit marks.¹⁴⁰ Registration is not necessary, but is helpful, to obtain other damages including the defendant's profits, the plaintiff's damages sustained, and attorneys' fees.

11. Preemption of certain state or local regulations

A state or local regulation that requires a trademark owner to alter how a registered mark is displayed is preempted by the Lanham Act and unenforceable.¹⁴¹ Unregistered marks are subject to the local regulations.

12. Caveat: local first use beats registration

Registration does not allow the registrant to displace and have priority over a prior unregistered user of a similar mark. Local common law rights have priority in that territory over later-acquired federal rights.¹⁴² Any registration is subject to a user's pre-existing common law rights.

B. Use vs. "Intent to Use."

1. Differentiation

Prior to 1988 in the United States, application was allowed only based on actual use in interstate commerce. Since then,¹⁴³ applications can be filed based on actual use of the mark, as outlined in 15 U.S.C. § 1051(a), or based on a bona fide intent to use the mark in interstate commerce as provided in 15 U.S.C. § 1051(b).

2. Priority

A mark filed in an ITU application will not be granted registration until the mark is actually used in commerce and the applicant files a certificate of use. The registration is effective as of the date of the application.

3. Cannot assign ITU

The Lanham Act specifically states that ITU applications may only be assigned to "a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing."¹⁴⁴ The goals of the statute are to disallow people from stockpiling trademarks and transferring them as a commodity.

Practice Tip

Because of this restriction on assigning ITU applications, carefully select among related entities for the applicant.

C. Principal vs. Supplemental Register

Marks can be registered on the Principal Register and the Supplemental Register. The Principal Register affords all rights of full registration. The Supplemental Register provides fewer rights,¹⁴⁵ and is generally where descriptive marks can be registered. A mark on the Supplemental Register must only be "distinguishable" from other marks, and is not presumed to be inherently distinctive. "In particular, unlike principal registration, supplemental registration is not prima facie evidence of the validity of the registered mark, of ownership of the mark, or of the registrant's exclusive right to use the registered mark in commerce."¹⁴⁶ In an infringement action, supplemental registration will be evidence of the descriptive nature, and unenforceability, of the mark. A mark first registered on the Supplemental Register that is then used for five years is probably eligible for registration in a new application...