Page 17 - Intellectual Property Disputes

provided that certain requirements are imposed under the licensee to help preserve the "source-
indicating" nature of the mark. fn 21

Registration Process

To obtain a federal trademark registration, the trademark owner must file a formal registration
application, together with specimens showing how the mark is used, and pay the required fee. The
USPTO examines trademark registration applications through a process similar to that used for patent
applications. After filing, the trademark application is assigned to a USPTO trademark attorney, who
evaluates whether the requirements for registering a mark have been met. The USPTO attorney
examines the registration for specifically enumerated categories of marks that cannot be registered (that
is, immoral, deceptive, scandalous, or merely descriptive marks). In addition, the USPTO attorney
conducts a search of registered marks to determine whether prior registered marks exist that are likely to
(a) cause confusion, (b) cause a mistake, or (c) deceive with respect to the applicant’s trademark.

After this examination, the USPTO either accepts or rejects the trademark application. If the application
is accepted, the public is notified in a government publication called the Official Gazette, which puts the
public on constructive notice of the acceptance. This notice is given so that members of the public have
an opportunity to object to the grant of a registration within an opposition proceeding. Assuming the
mark is not successfully opposed in such a proceeding, a registration ordinarily will issue. Conversely, if
the USPTO rejects the application, the applicant is afforded an opportunity to challenge that decision.

The USPTO registration process permits a person to pursue a trademark registration based simply on a
"bona fide intent to use" a mark in commerce. This process affords an applicant certain priority rights
when the applicant does not currently use a mark but wants to preserve it for future use.

Among other purposes, a federal trademark registration can be used in a lawsuit as prima facie evidence
of the registered mark and the registrant’s exclusive right to use that mark in commerce. However,
trademark rights and entitlement to relief for infringement are available regardless of whether a
trademark registration is in place. In the absence of a federal registration, the trademark owner must
prove that the mark is inherently distinctive to be entitled to relief. fn 22

Provided certain conditions are met, a trademark’s registration can become incontestable after a
prescribed time period. An incontestable registration generally serves as conclusive evidence of the
validity and registration of the mark as well as the registrant’s ownership of the mark and exclusive right
to use it.

Trademark rights arise by virtue of use. In general, the first party to use a symbol as a mark in commerce
to distinguish goods or services is entitled to exclude others from making a confusingly similar use of
the mark in the same area of commerce. However, the failure to continue to use a mark appropriately
can result in an abandonment of the mark, that is, a forfeiture of the trademark rights.

fn 21 See, generally, Stanfield v. Osborne Indus., Inc., 52 F.3d 867, 871–72 (10th Cir. 1995).

fn 22 A mark that is inherently distinctive is commonly referred to as having acquired secondary meaning. Secondary meaning
generally refers to a mark that is descriptive of the goods or services and that consumers recognize as synonymous with a function,
such as IBM for computers and other business machines.

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