All trademark applications that have been approved for registration are published in a weekly Official Gazette. Any party that believes it will be injured by the issuance of a trademark registration may oppose that registration by filing a Notice of Opposition within the permitted time. Once a Notice of Opposition has been filed, the application file is transferred to the Trademark Trial and Appeal Board, a quasi-judicial administrative tribunal within the PTO, and proceedings are instituted. An opposition proceeding is similar to litigation in that discovery is permitted, testimony is recorded and briefs are submitted. Decisions of the Trademark Trial and Appeal Board may be appealed to the United States Court of Appeals for the Federal Circuit.
Archives for August 2015
When the original version of a mark is replaced with a newer or updated version there is a risk that a third party can claim the mark has been abandoned. For purposes of determining priority there is a risk that the new version may be so altered so as to be deemed only to have been used since the new version was adopted, rather than allowing the owner to track his or her priority of use back to the date when the original form of the mark was adopted. The key test to determine whether the original version of the mark has been abandoned is whether the commercial impression of the mark has been altered and whether the change is so dramatic that the two versions will not be seen as legal equivalents.
The owner must take action against third party infringers of the mark. In short the owner must “police” his mark. Failure to prosecute infringers can substantially weaken the strength of the mark and thus the owner’s ability to stop future unauthorized use. Once infringement is discovered the owner should take prompt action against it. Many infringements can be addressed by sending cease and desist letters.
While a trademark can be licensed to another by the owner, the owner must exercise control over the quality of the licensee’s goods. Therefore, in order for the owner to license its mark and keep ownership of it at the same time, certain responsibilities must be met. Merely licensing the trademark to another without controlling the quality of the licensee’s goods will result to the loss of ownership over the trademark. Such a license is a license in gross and or a “naked” license.
Quality control by the licensor can take various forms. The following are forms of general standard provisions that impose some responsibility on the owner to maintain quality control: (1) the owner shall have the right to control the quality of the licensee’s products; (2) written specific guidelines or standards must be followed by the licensee; (3) the owner shall have the right to inspect the licensee’s premises and production processes; (4) the licensee shall provide product samples to the licensor according to a specific schedule; and (5) the owner shall have the right to disapprove packaging and advertising by the licensee.
Trademark rights can also be lost when the mark is used as the generic name for a product or service and thus ceases to serve its function of identifying the source (and quality) of the product or service. When a trademark owner itself uses the mark as a generic term or allows others to do so, rights are lost and it becomes available for use by all. While an occasional descriptive use will not cause a trademark to be lost, widespread generic use will. Examples of once-strong trademarks that have become generic through descriptive or generic use include “yo yo,” “cellophane,” “trampoline,” “escalator,” “thermos,” “aspirin” and even “raisin bran.”
To avoid this result, trademark owners should be careful to use the mark as a brand name rather than descriptively. A trademark can be lost if it becomes generic (i.e., when it is used to describe a product or service rather than to identify its source and quality). A trademark owner may avoid widespread generic use by: 1) using it as an adjective as opposed to a noun (i.e., “KLEENEX tissue” not “a kleenex”); 2) capitalizing the trademark or otherwise setting it apart from surrounding text; or 3) using it in conjunction with the term “brand” (i.e., “SCOTCH brand tape”). All of these measures will have the effect of preserving the trademark’s value as a “brand name” and will discourage its use as a generic term.
Because trademark rights are based on use, when a trademark owner discontinues its use of a mark, this can result in abandonment. However, the fact that use of the mark has stopped does not, by itself, mean that it has been abandoned. In order for a mark to be abandoned, the owner must (1) intend not to resume use or (2) act in such a manner that its claims to resume use are not reasonable. Thus, while temporary cessation of use does not mean a mark has been abandoned, a trademark owner cannot “warehouse” a mark that it is truly not using merely by claiming that it intends to resume use.
Unlike copyrights or patents which have a limited life, trademarks, at least theoretically, can exist indefinitely. However, under certain circumstances, trademarks can be “lost.” A trademark is “lost” when it ceases to identify the origin or quality of the goods or services on which it is used. The most common ways to lose a trademark are through (1) abandonment; (2) using the mark in a “generic” manner; (3) licensing the mark indiscriminately; and (4) failing to prosecute infringers.
Under the Lanham Act, a mark will be deemed abandoned when the trademark owner has discontinued use of the mark in connection with the particular good or service and has no intent to resume use within the reasonably foreseeable future. In general, nonuse for three consecutive years creates a presumption of abandonment. A trivial or token interim use will not be sufficient to avoid a finding of abandonment. Even longer periods of nonuse will not create a presumption of abandonment under some circumstances. One is when the goodwill in the mark continues after the nonuse (i.e., where the public still associates the mark with the owner and its product or service). Another is when there is an explanation for the nonuse (i.e., the owner is in the process of repositioning the product or its market). Finally, abandonment will also not be presumed if nonuse is caused by factors beyond the owner’s control (i.e., war, labor strike, import problems, or some natural catastrophe). If a mark truly has been abandoned through nonuse, a subsequent resumption of use will not revive it. In such a case, the trademark owner must start to build trademark rights anew.
The T and SM symbols are symbols that a trademark owner may use to indicate that a term is considered a trademark (T) or service mark (SM) when the term has not been registered. Use of these symbols puts third parties on notice that trademark rights are being claimed. The symbols should be used in the same manner that an ® is used for registered marks.
The ® symbol may only be used in connection with marks that are registered with the PTO and only when used in connection with the goods or services covered by the registration. The symbol should be displayed next to the word, logo, or drawing which is registered at least once in all advertising and promotional materials. In addition or as an alternative, the notation “Marca Registrada” or “Registered in the United States Patent Office” may also be used. Similarly, a legend may be used stating that the words or logo are “a registered trademark of…” or simply “®” followed by the name of the corporate owner. Failure to include some indication that the mark is registered may result in a denial of certain damage awards in an infringement action.
A federal trademark registration can become incontestable if the mark has been used continuously for any consecutive five-year period after registration upon the filing of a Declaration of Incontestability. Accordingly, either simultaneously with the filing of the Declaration of Use, or at any subsequent point, the owner of the trademark registration may file such a declaration attesting to the continuous use of the mark.
