Trademark registration begins with an application to the commissioner of patents and trademarks at the U.S. Patent and Trademark Office (USPTO). One may apply with either the principal register or the supplemental register of the USPTO. The principal register records descriptive, suggestive, arbitrary, and fanciful marks that have acquired secondary meaning. The supplemental register records descriptive marks that are capable of acquiring secondary meaning but have not yet acquired that meaning in the minds of many consumers. Once a mark acquires secondary meaning, however, it can be transferred from the supplemental register to the principal register.
Registration with the principal register is proof that the mark is valid, registered, and the intellectual property of the registrant, who has exclusive rights to use the mark in commerce. Registration with the principal register is deemed to put potential infringers on constructive notice of the registrant’s ownership interests in the trademark and entitles the owner to bring an infringement suit against the bearers of any offending marks. Individuals or entities who counterfeit registered trademarks also face criminal and civil penalties.
Applicat ions for offensive, immoral, deceptive, or scandalous marks will be denied (see 15 U.S.C.A. 1052[a]). Marks such as “bubby trap” for a brassiere is an example of an offensive mark, In re Riverbank Canning Co., 95 F.2d 327 (Cust. & Pat.App. 1938), as is the mark “a breast in the mouth is better than a leg in the hand” for a chicken restaurant, Bromberg, Et Al. v. Carmel Self Service, Inc., 198 U.S.P.Q. 176 (Trademark Tr. & App. Bd. 1978). Offensive marks cannot be cured by acquiring a secondary meaning that is inoffensive, unless the secondary meaning entirely replaces the primary, literal, or obvious meaning.
Despite the advantages of registration, it is actually the use or intended use of a mark that confers upon the mark federal trademark protection. As a general rule, conflicting claims to a trademark are resolved according to priority of appropriation. The first to use a mark will normally be given proprietary rights over the mark. Although this rule seems clear cut, demonstrating first use or first intended use can often prove difficult in court. Consequently, the law gives businesses incentive to register their marks concomitantly with the date of first use by presuming that registered marks have been in continuous use from the date the trademark application was filed and by prohibiting court challenges to trademarks that have been in continuous use for five years from the date of registration. Registration also demonstrates to a court that the user has done everything to protect its mark.
A rule favoring the first user of a trademark protects what is assumed to be an established identification between consumers and a trademarked product. Nonetheless, it is possible that a second user may establish stronger consumer identification with its product in a geographical market different from the market where the first user is doing business. When this happens, courts will often recognize the trademark rights of both the first and second users, so long as the second user established its mark in good faith and confines its use to a market distant from the first user.
Trademark registrants can forfeit their rights to a mark by using them in a fraudulent or deceptive manner. They can also lose their rights by abandoning the mark. However, nonuse by itself does not constitute abandonment. Acts of abandonment must also be accompanied by an intent not to use the mark again. Finally, registrants can lose their rights to a trademark if the public adopts a trademark as the general name for a type of goods, as happened with the aspirin and cellophane examples mentioned above. Trademark owners typically take great efforts to prevent their marks from becoming generically used by the public. Rollerblade, for example, spent millions of dollars in advertising and law suits to prevent its new brand of roller skate from becoming the generic name used to describe in-line skates, after both consumers and rivals began referring to all such skates as rollerblades regardless of who made them.