IP Law Bulletin

As a general principle, a trademark owner should apply to register her mark where: (a) she is now or imminently using it; and (b) she reasonably foresees her use expanding in the future. Obviously there are other considerations—most often cost—but if the trademark owner foresees a rapidly expanding marketplace, she should, ideally, file in more jurisdictions rather than fewer. An ounce of prevention, in the form of aggressive pre-emptive filing based on intent-to-use, is worth many kilograms and dollars of effort to cancel third-party registrations of her mark in “first-to-file” countries, where registrations go to the first applicant to file regardless of the applicant’s use or non-use. Some owners of marks that can fairly be expected to become instantaneous mega-brands mount military-like operations to launch globe-girdling, simultaneous applications around the planet. OK, if you’re not DREAMWORKS SKG, please keep reading.

Territorial Question Number 1 – U.S.: Federal and/or State?

The U.S. trademark owner, naturally enough, starts with the “trademark side” of the U.S. Patent and Trademark Office (USPTO). Individual states permit a trademark owner to obtain a state registration for her mark in lieu of, or in addition to, a U.S. registration; the writ of a state registration runs within the state’s borders. Protection via the USPTO, on the other hand, relates to use of the mark in interstate commerce. The U.S. is a constitutional republic after all, with limited and specified powers to govern its citizens and, among other things, their trademarks. The power to enact legislation about trademarks arises from Congress’ constitutional authority to regulate interstate and foreign commerce. If our trademark owner is a baker of cookies who sourced all her ingredients from her own backyard garden (that lay within a single state) and never sold a cookie except to a neighbor, she would not be engaging in interstate commerce, and therefore she would be unable to satisfy the requirement (for U.S. registration) of engaging in “commerce that may be regulated by Congress.” This distinction between “use in [regulable] commerce” and “use anywhere [our locavore cookie baker]” is almost quaint in 2014 where, if you pick up a pencil, you are probably subject to some Congressional enactment or other (or some governmental regulation or other promulgated pursuant to such enactment). Nonetheless, the issue occasionally arises, and if our trademark owner can simply find a cookie-eater across a state line, she doesn’t need to worry about satisfying the interstate commerce requirement.

Before the advent of “intent-to-use” (ITU) trademark applications, which allow a person with a bona fide intent to use a trademark to protect her rights in the mark even before she begins using it in interstate commerce, state trademark registrations were often used by owners as a way to obtain some protection until the use of the mark crossed state lines. The state registration process was, and often still is, faster, cheaper, and less rigorous than the federal registration process. Once the USPTO began accepting ITU trademark applications in 1989, however, one of the chief motivations for filing a state application—the aforementioned faster, cheaper, and less rigorous process—was no longer chief.

Nevertheless, there is still a place for the state registration. For example, a local business that does not conduct business out of state, or which uses a mark unlikely to survive USPTO examination (because, for example, it is “merely descriptive”) could benefit by filing for a state trademark registration. A local business may be better served to focus on gaining brand equity through its local use and state registration before embarking on filing for federal trademark rights so that it can rely on the brand recognition it attained to overcome rejections related to being “merely descriptive.” However, the mark owner should beware of reverting to state registration only after a Federal application has failed. Some states require the applicant to disclose whether any USPTO application was previously filed, and, if refused, why. States that do this will usually adopt the disclosed Federal reasoning for refusal and similarly refuse state registration. (This applies of course only to substantive reasons for refusal; a Federal applicant who never paid the filing fee will not be barred from state registration, provided she pays the state fee!)

Territorial Question Number 2 – Foreign Filings

As a rule of thumb, if a trademark owner is going to do business in a foreign jurisdiction, she should file there. She can do this country-by-country, or she can take advantage of the supra-national organizations or associations that exist and provide for “one-stop” trademark filing in multiple jurisdictions. These include: the Madrid Protocol; the European Union’s Office for Harmonization in the Internal Market (OHIM), which grants a Community (n/k/a “Union”) Trade Mark; and two different African organizations—the Francophone Organisation Africaine de la Propriété Intellectuelle (OAPI) (single filing for 16 African countries) and the Anglophone African Regional Intellectual Property Organization (ARIPO) (single filing for 18 African countries).

A single filing in Europe’s OHIM can obtain protection for a trademark owner in 28 European countries. There is no requirement for a U.S. applicant in OHIM to have a pending U.S. application or an existing U.S. registration, but there is a requirement to hire a European lawyer (one touch of nature makes all lawyers kin!). Similar filing procedures exist for Africa’s OAPI and ARIPO.

The Madrid Protocol is a bit more complicated, but is typically well worth the trouble for the foreign filer. When a trademark owner files for her mark in the USPTO, within six months of that filing she can take her filed application to the USPTO’s Madrid Protocol “desk” and there designate any or all of the 90 or so jurisdictions that are signatories of the Madrid Protocol. (Oddly enough, Canada has yet to sign-up.) Her application will then be filed in all designated jurisdictions through the offices of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. The more countries our trademark owner designates, the larger the filing fees. Once she has finished her online designations, she will see the automatically calculated total filing fee; at which point she can hit “submit” or “cancel.” The fee can also be estimated reasonably reliably in advance of the designation process by commercially available software programs, such as Global IP Estimator. Because trademark rights are territorial, a U.S. owner’s application will be subject to the national examination process in each designated jurisdiction, and in any given jurisdiction the eventual result may be registration, partial registration, or refusal.

Once the Madrid Protocol process has begun, WIPO issues an “International Registration,” which actually represents a central (electronic) file on the mark showing the extent of protection in each designated country. Periodic maintenance filings for this International Registration are made with WIPO and serve to renew protection in all jurisdictions where it has been gained.

Territorial Question Number 3 – Back to the U.S.: Principal or Supplemental Register?

The territorial question for trademarks does not just mean at which offices should the mark be filed, but within the United States, with which register should the mark be filed. The USPTO maintains two different registers for trademarks, the Principal and the Supplemental. The Principal is the one that provides all of the desired protection and benefits a trademark owner typically wants to attain when undergoing the examination process. This protection includes constructive notice of the registrant’s rights, favorable legal presumptions, the potential for the mark to become “incontestable,” and the right to use the infringement-deterring circled R symbol, ®, signifying U.S. registration.

The Supplemental Register was established to accommodate U.S. trademark owners whose marks were not eligible for U.S. registration on the Principal Register, but who wished, and were able, to register their marks in foreign countries under treaties that enabled such registration, provided the U.S. owners’ marks were domestically (i.e., in the USPTO) registered. Today the Supplemental Register is principally used by trademark owners who were unable to achieve registration on the Principal Register because the mark is considered by the examining attorney to be a “merely descriptive” mark. During the application process, the USPTO allows an owner to move its application from the Principal Register to the Supplemental Register if it is unable to successfully argue against a rejection for being “merely descriptive.” Owners can register the mark on the Supplemental Register, thereby allowing them to seek rights in foreign countries requiring some form of U.S. registration, and over time can demonstrate that the mark has attained the necessary “secondary meaning” or acquired distinctiveness to no longer be considered “merely descriptive.” The mark can then later be moved from the Supplemental Register to the Principal Register. The U.S. Trademark Act, and more particularly 15 U.S.C. § 1052(f), presumes that five years of substantially exclusive use serves to create secondary meaning and turns a “merely descriptive” mark into a (Principal) registrable one. The Supplemental registrant may display the same ® symbol as the Principal registrant, and the examiner looks to both registers when determining whether a newly applied for mark is confusingly similar to any prior registrations.

In short, it is the rare case where an applicant would set out directly for the Supplemental Register. But if a contest over refusal of Principal registration looks to be an uphill fight, the applicant is often well-advised to amend her application to the Supplemental Register and live with the half-a-loaf of Supplemental registration for a while rather than going hungry with only her common law (unregistered) rights.

But Don’t Take Our Word for Any of This

The wisdom of a successful entrepreneur and brand creator: “From the get-go we poured resources and money into protecting ourselves…registering…trademarks in every country…You have to plan for ultimate success from the first day. You don’t want to play catch up later.”

Tips for how to prepare and file a United States trademark application will be provided in the fifth article in our series. Stay tuned!

This update was prepared by Nutter’s Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.