What is the significance of using the trademark registration ® symbol?
The ® symbol notifies others of federal registration, enhancing protection against infringers and improving chances of recovering damages or profits in lawsuits. Use it once on labels, tags, or ads; omission doesn't forfeit ownership but may limit enhanced remedies for willful infringement. Specify its use in contracts with advertisers, printers, or licensees. No need for ® in non-commercial references to marks.
What happens if a federal registration is canceled but ® is still used?
Cancellation occurs for missed maintenance filings without PTO notice. Continued ® use post-cancellation is improper; cease until reregistration to avoid misleading claims.
How should unregistered trademarks use TM or SM symbols?
Use TM (trademark) or SM (service mark) to assert ownership and deter imitators, e.g., The Purple World™. Provides no statutory benefits but signals claim. Use once per page or as needed to convey ownership without repetition.
What are Section 8 and 15 Declarations?
Section 8 affirms continued mark use, maintaining registration. Section 15 seeks incontestability after five years continuous use, strengthening against challenges. File combined between fifth-sixth registration years; requires current owner filing, samples proving use, and no lapses/challenges.
What qualifies a mark for incontestability via Section 15?
Continuous use for five years post-Principal Register placement on same goods/services, no adverse court decisions, no pending challenges, timely filing, and not generic. Incontestability bars distinctiveness attacks but allows challenges for fraud, abandonment, misrepresentation, fair use, antitrust violations, functionality, prior rights, or genericness.
What are consequences of missing Section 8 and 15 filing deadlines?
Missing deadlines cancels registration (Section 8) or forfeits incontestability (Section 15). Grace periods exist but risk loss; PTO sends no reminders.
What is a Section 8 Declaration and Section 9 Renewal?
Section 8 reaffirms use; Section 9 renews registration. File combined between ninth-tenth years post-registration, then every ten years. Requires proving ongoing use on registered goods/services; failure cancels registration.
Why is continuous use essential for trademark rights?
Non-use risks abandonment; three years creates presumption of abandonment, rebuttable by showing intent to resume. Actual abandonment depends on facts, not fixed period. For ITU registrations, use must commence within three years max.
How does maintaining control over a mark prevent abandonment?
Unrestricted use dilutes identification function, risking abandonment. Enforce consistency in product/service quality, as with franchise rules ensuring uniform experience. Police unauthorized uses via searches, Official Gazette monitoring, or watching services to assert rights promptly.
What are risks of naked licenses?
Licensing without quality supervision (naked license) can forfeit rights, as unsupervised goods/services erode mark's distinctiveness. Licenses should mandate sample approvals and quality controls.
What are authorized uses of another's trademark?
Stores may use marks to indicate product availability, clarifying ownership (e.g., "Levi's sold here"). Labels note incorporated trademarks (e.g., "Wear-Dated® by Monsanto"). Problems arise if ownership unclear. Textual uses fine; comparative ads must match original typeface/logo to avoid confusion/dilution.
How can genericide be avoided?
Genericide occurs when marks become synonymous with products (e.g., Kleenex for tissues). Prevent by: pairing with generics (Kleenex tissues), avoiding verb/general noun use (don't "roller blade," skate on Rollerblades), capitalizing, and protesting improper uses.
What concepts apply to transferring trademark ownership?
Trademarks are property; transfer (assignment) requires written document, separate from business sales for privacy. Record with PTO; new owner obtains certificate. Assignments must accompany goodwill; naked assignments (without business/assets) invalid.
How to transfer trademarks to a new corporation?
Assign marks to new entity and record assignment with PTO. Renewals and declarations of continued use required: Section 8/15 between fifth-sixth years (incontestability optional but recommended); Section 8/9 between ninth-tenth years, then every ten. Missing continued use declarations cancels registration.