U.S. Federal trademark registration
Registering a trademark with the U.S. Patent and Trademark Office (“USPTO”) confers important advantages on the mark's owner. Trademark registration gives notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, the exclusive right to use the mark on or in connection with the goods or services set forth in the registration, the ability to bring an action concerning the mark in federal court, the use of the U.S. registration as a basis to obtain registration in foreign countries, and the ability to file the U.S. registration with the U.S. Customs and Border Protection to prevent importation of infringing foreign goods.
Marks also are protected by anti-dilution laws, which ensure that a famous mark’s distinctiveness cannot be blurred by the commercial actions of others, even if those actions fall just short of causing actual confusion.
A mark may be federally registered with the PTO only if it meets certain requirements. The mark must be "used in commerce," or the person must have a good faith, “bona fide intention” to use the mark in commerce.
However, not all marks that are used in such manner will qualify for trademark protection. Eligibility for registration and the degree of trademark protection accorded to the mark depend largely on the mark/s "distinctiveness." The requirement of distinctiveness is an important safeguard against certain generic or descriptive terms from being monopolized by one merchant to the exclusion of others that might need to use the terms to sell competing products.
- 15 U.S.C. §1051(a).
- Id. §1051(b).
- In addition to denying registration for marks that lack distinctiveness, the Lanham Act states that a mark shall not be registered if it is confusingly similar to another registered mark; is immoral, deceptive, or scandalous matter; or disparages or falsely suggests a connection with persons, living or dead, institutions, beliefs, or national symbols, or brings them into contempt or disrepute. 15 U.S.C. §§1052, 1053.
- Roger E. Schechter & John R. Thomas, Intellectual Property: The Law of Copyrights, Patents and Trademarks" 27 (2003).