New York Trademark Attorney Blog
This question, although it seems basic is a good question that is frequently asked, and should be thoroughly understood before proceeding with trademark registration. The concepts of trademark law namely use, protection, enforcement, and distinctiveness are all interrelated. A trademark owner can save time, expense, and effort by adopting an inherently distinctive mark and ensuring it is registered on the Principal Register with the United States Patent and Trademark Office. This blog will explain why registration is essential for acquiring strong legal rights, being able to efficiently enforce one’s trademark rights, and deterring others from infringing on your legal rights. If a trademark owner decides not to register its mark, and wants to enforce its rights, this becomes challenging. This challenge will also be encountered if a trademark is only registered on the Supplemental Register of the Trademark Office and not the Principal Register. See our firm page entitled, Filing Your Trademark On The Principal Register And Supplemental Register, for more information on this topic. The reasons why a trademark owner can benefit from registration are due to the presumptions that attach under the Lanham Act, specifically Sections 7(b) and 7(c) (15 U.S.C. §1057).
Under Section 7(b) of the Lanham Act, “[A] certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.” These same rights are conferred on a trademark owner who initiates the application process as an intent-to-use applicant, assuming the mark matures to a registration (the intent-to-use filing date would act as the constructive use date for priority purposes under Section 7(c) of the Lanham Act).
If the mark is registered on the Principal Register, the trademark owner doesn’t need to prove its proprietary rights if involved in litigation in court or before the Trademark Trial and Appeal Board (“TTAB” or the “Board”). In other words, if you only have common law rights or a mark on the Supplemental Register, you will need to spend time and resources to first prove you have proprietary rights in the trademark before attempting to enforce your rights in an infringement action or under a claim for likelihood of confusion at the TTAB. The proprietary rights must be acquired before the opposing party’s priority date. See Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1378 (Fed. Cir. 2002); Otto Roth & Co. Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Keep in mind that a Supplemental Registration will provide a basis for standing and perhaps priority may not need to be proven, but proprietary rights must be demonstrated. See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252 (TTAB 2012) [precedential]. A mark on the Supplemental Register is presumed to be merely descriptive of the goods or services identified in the registration, unless the trademark owner can prove acquired distinctiveness. The Opposer in Otter Products LLC, did not prove it possessed proprietary rights to the mark.
Another example of a case centered around proving proprietary rights is PNC Financial Services Group, Inc. v. Keith Alexander Ashe dba Spendology and Spendology LLC, Opposition No. 91207409 (October 15, 2013) [not precedential]. In this case, the applicant tried to prove proprietary rights through use analogous to trademark use. To succeed on this basis, one must show prior use that is sufficient to create an association in the minds of the relevant consumers between the mark and the goods or services. This can be accomplished by indirect evidence of the owner’s use of the mark in advertising, brochures, online use, newspapers ads or articles, etc. In this case, the applicant could not rely on an earlier use date than its filing date. However, the Opposer in this case successfully proved it possessed common law rights through demonstrating it acquired a proprietary interest in the mark, before the applicant’s filing date.
Opposer accomplished this by introducing evidence of the following: (1) a declaration of the product manager of the goods (an online money management tool, tracking balances, budgets and expenses) with exhibits; and (2) applicant’s interrogatory responses. The declaration stated that Opposer had been offering the identified services under the mark to the general public through its website since August 26, 2010, and had continuously used it since that time. Attached to the declaration were website printouts showing use of the mark followed by sm (service mark symbol) with references to the types of services. The declaration and exhibits were accepted because it is well settled law that oral testimony is sufficient to establish prior use or continuous use if offered by a witness with personal knowledge of the facts, and the evidence is clear and consistent. See Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB 1979); GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB 1976). Based on this evidence Opposer’s motion for summary judgment was granted, and applicant’s registration was refused. If you have questions regarding trademark trial and appeal board proceedings or proving proprietary rights, please contact the firm for a courtesy consultation.