Registration of marks
Applications for registration can be filed on the basis of use or intent to use. No registration will issue until a declaration of use is filed and proof of use is accepted. The exception is for registrations based on a non-US registration under international conventions. Notably, while a non-US entity does not need to show proof of use of a mark in the United States to secure the registration, the registration will be cancelled if the registrant fails to file proof of use in the United States for the goods or services identified in the registration certificate between the fifth and sixth years after the issue date of the registration. The registration is also susceptible to a petition for cancellation based on abandonment by non-use after the three-year statutory presumption of abandonment has passed from the date of registration.
If an application is filed on the basis of use, and there are no objections raised to the application as filed, there are no extensions of time to oppose, and if no oppositions are lodged against the application, registration should issue between nine and 11 months after the filing date. According to the USPTO, it takes about three months for the trademark application to be reviewed by an examiner, and, on average, approximately 10.7 months for the application to reach registration.
Any USPTO office actions raising issues with respect to the application, such as with respect to descriptiveness, functionality, prior registrations, the identification of goods or the sufficiency of the specimens of use, will delay acceptance of the application for publication for the purposes of opposition. If the application is filed on the basis of intent to use, and the declaration of use is not filed and accepted before the mark is approved for publication, a notice of allowance will issue after the close of the opposition period. The applicant then has six months to file a declaration of use and proof of use, or a request for an extension of time to make such filing. The applicant may secure up to five extensions of six months each to file the proof of use.
The fees associated with filing a new trademark application are US$400 per class using the regular Trademark Electronic Application System (TEAS) form, US$275 using the TEAS reduced fee form, and US$225 using the TEAS Plus form (in which the applicant selects the goods and services listing from existing entries in the USPTO Trademark Identification Manual). As of October 2019, the USPTO will no longer accept paper trademark filings.
As of August 2019, the USPTO requires that all foreign-domiciled trademark applicants must be represented by an attorney who is licensed to practise law in the United States.i Inherent registrability and acquired distinctiveness (secondary meaning)
There is a wide range of words, phrases, designs, symbols and trade dress that are inherently registrable.
There are some marked exclusions within that listing of items potentially inherently registrable. That is to say, an applied-for ‘mark’ may be found not to be inherently registrable if, in relation to the goods or services identified in the application, it is merely descriptive, primarily a surname, primarily geographically descriptive or if it fails to function as a mark by virtue of being ornamental or informational, or functional in the context in which it is used. Additionally, product configurations are not inherently registrable, although they may be registered upon proof of acquiring secondary meaning.
Marks that are merely descriptive, primarily surnames or geographical designations may be registered on the basis of acquired distinctiveness. Five years’ continuous, commercially significant and substantially exclusive use creates a presumption of acquired distinctiveness. For highly descriptive marks, more proof may be required, and, in appropriate cases, less time is required for a finding of acquired distinctiveness.ii Prior rights
Prior rights may provide a basis for precluding registration or cancelling a registration.
Prior use in even a limited geographic market provides grounds for defeating a registration if the junior use or trademark claim is of a confusingly similar mark used in connection with the same or related goods or services.
Prior rights, however, may be extinguished and so become unavailable as grounds to challenge the registration of a junior user’s mark. These prior rights may be extinguished in a number of ways, the most common of which are: (1) abandonment, with non-use for three years giving rise to a presumption of abandonment; (2) naked licensing, so that the mark no longer functions to identify the senior user as the source of the goods or services (a licensee will be estopped from relying on its licensor’s failure to exercise quality control but is not precluded from relying on the licensor’s failure in other instances to exercise quality control over the nature and extent of the use of the mark); and (3) assignment in gross, where the mark is separated from the goodwill associated with it.
With respect to abandonment, a change in the form of the mark, from that in which it is registered, may leave the registration subject to cancellation, which may affect the respective rights of the parties even where the use of at least some component of the mark as originally registered remains. Additionally, once a mark has been abandoned, subsequent use cannot retroactively cure the past abandonment.iii Inter partes proceedings
The inter partes proceedings before the TTAB are governed by the Federal Rules of Civil Procedure and the Federal Rules of Evidence, except where the TTAB has established an exception to the Federal Rules. Recent rule changes have been made to make the proceedings more efficient and less costly, permitting testimony to be made of record by declaration so long as the declarant is subject to cross-examination, and limiting the number of interrogatories, requests for production of documents, and requests for admissions that may be made in discovery, to 75 each. Under the Accelerated Case Resolution procedure, the parties can stipulate other measures to make the proceeding more efficient, such as by further limiting discovery, waiving cross-examination and agreeing to shorter time frames for filings than are provided by the TTAB. Under consideration is a rule change to simplify and expedite cancellation proceedings brought on the basis of abandonment of the mark of the registration.
The most common inter partes proceedings are oppositions and cancellations. The same basic standards apply in the US as elsewhere. In each instance, the party in the position of the plaintiff must allege and establish timeliness of the filing, standing to bring the proceeding (a legitimate commercial interest in the outcome) and grounds (such as genericity of the challenged mark, functionality, likelihood of confusion with a mark previously used or registered and not abandoned).
Concurrent use proceedings are available in limited circumstances. The difficulty in securing a concurrent use registration is the requirement that each or all of the parties operate in a distinct geographic market, such that there is no likelihood of confusion arising from the concurrent use and registration. This creates obvious difficulties with online sales of goods and is best adapted to local food service operations, medical practices, community banks and credit unions, and other service industry segments where the customer base is largely local.iv Appeals
Appeals from decisions of the TTAB may be taken to either the Court of Appeals for the Federal Circuit or to a US federal district court. There are marked differences between these courts for appeals.
An appeal to the Federal Circuit is decided on the basis of the record before the TTAB. No new evidence and no new claims will be considered.
If the appeal is taken to a district court, there is an opportunity to raise new claims and to introduce additional evidence. By way of example, if the issue is whether secondary meaning in a mark has been achieved, and the record below was not persuasive, a survey or other expert evidence might be introduced. In the context of an appeal in an inter partes proceeding, a claim for infringement may be brought. Alternatively, a claim for a declaratory judgment of non-infringement may be introduced into this proceeding. A litigant who appeals an ex parte decision of the TTAB to the district court may be required to pay both the USPTO’s costs and attorneys’ fees, regardless of the outcome of the appeal.