Registration of Trademarks and Service Marks in the USPTO: Why Do It? Ted Davis Kilpatrick Townsend & Stockton LLP

Transcription

1 Trademarks and Service : Why Do It? Ted Davis Kilpatrick Townsend & Stockton LLP

2 The s Two Registers They are: the Supplemental Register; and the Principal Register. 2

3 Does your company apply to register marks that it knows are ineligible (at least for the time being) for the Principal Register? Yes No 3

4 Advantages of Registration on the Supplemental Register They are: the right to use the symbol, which can: have at least some deterrent value; and assist in the development of secondary meaning; the availability of federal subject matter jurisdiction in actions to protect the mark; and the obligation of the to reject applications to register confusingly similar marks. 4

5 Does your company take into account the potential effect on future litigation costs when determining whether to pursue the registration of a mark? Yes No 5

6 They are: the registration s value as evidence of mark validity in litigation to protect the mark: Under Sections 7(b) and 33(a) of the Lanham Act, 15 U.S.C. 1057(b), 1115(a), a nonincontestable registration is prima facie evidence of the registered mark s validity; 6

7 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.... Section 7(b) of the Lanham Act, 15 U.S.C. 1057(b). 7

8 Any registration... on the principal register... shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant s ownership of the mark, and of the registrant s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration..., but shall not preclude another person from proving any legal or equitable defense or defect... which might have been asserted if such mark had not been registered. Section 33(a) of the Lanham Act, 15 U.S.C. 1115(a) (emphasis added). 8

9 A certificate of registration with the PTO is prima facie evidence that the mark is registered and valid (i.e., protectible), that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce.... As a result, when a plaintiff sues for infringement of its registered mark, the defendant bears the burden to rebut the presumption of [the] mark s protectibility by a preponderance of the evidence. Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999) (citations omitted). 9

10 Circuits holding that a nonincontestable registration shifts the burden of proof on the issue of the registered mark s validity include: the First Circuit, see Colt Def., LLC v. Bushmaster Firearms, Inc., 486 F.3d 701, 706 (1st Cir. 2007); the Second Circuit, see Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206, 216 n.10 (2d Cir. 2012); the Sixth Circuit, see Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 514 (6th Cir. 2007); the Eighth Circuit, see WSM, Inc. v. Hilton, 724 F. 2d 1320, 1326 (8th Cir. 1984); the Ninth Circuit (usually), see Zobmondo Entm t, LLC v. Falls Media, LLC, 602 F.3d 1108, (9th Cir. 2010);

11 Circuits holding that a nonincontestable registration shifts the burden of proof on the issue of the registered mark s validity include: the Tenth Circuit, see Creative Gifts, Inc. v. UFO, 235 F.3d 540 (10th Cir. 2000); the Eleventh Circuit (probably), see Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1357 (11th Cir. 2007); the D.C. Circuit, see Aktieselskabet AF 21 November 2001 v. Fame Jeans, Inc., 525 F.3d 8, 14 (D.C. Cir. 2008); and the Federal Circuit, see Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358 (Fed. Cir. 2009).

12 Plaintiff refers to its [nonincontestable] trademark registration. Defendant has, however, introduced enough evidence of the genericness of the [registered mark] to burst the presumption created by section [33(a)]. Thus plaintiff cannot rely on that presumption to defeat the motion for summary judgment. The presumption really serves only to shift the burden of production to the defendant. Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 938 (7th Cir. 1986). 12

13 Circuits holding that a nonincontestable registration shifts the burden of production on the issue of the registered mark s validity include: the Fourth Circuit (at least recently), see OBX- Stock, Inc. v. Bicast, Inc., 558 F.3d 334, (4th Cir. 2009); the Fifth Circuit (at least recently), see Igloo Prods. Corp. v. Brantex, Inc., 202 F.3d 814, 819 (5th Cir. 2000); and the Seventh Circuit, see Custom Vehicles Inc. v. Forest River, Inc., 476 F.3d 481, (7th Cir. 2007). 13

14 They are: the registration s value as evidence of validity in litigation to protect the mark: under Sections 7(b) and 33(a) of the Lanham Act, 15 U.S.C. 1057(b), 1115(a), a nonincontestable registration is prima facie evidence of the registered mark s validity; under Section 33(b) of the Act, id. 1115(b), an incontestable registration is conclusive evidence of the registered mark s validity; 14

15 Has your company ever delayed bringing an enforcement action for registration-related reasons? Yes No 15

16 Two things happen at the fifth anniversary of a registration s issuance: the grounds on which the registration can be cancelled are automatically restricted to those set forth in Section 14 of the Lanham Act, 15 U.S.C. 1064; and the registrant may be able to file a declaration of incontestability under Section 15 of the Lanham Act, id

17 To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant s ownership of the mark, and of the registrant s exclusive right to use the registered mark in commerce.... Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement..., and shall be subject to the... defenses or defects [in Section 33(b)(1)-(9)]. Section 33(b) of the Lanham Act, 15 U.S.C. 1115(b). 17

18 An incontestable registration is conclusive evidence of the validity of the registered mark To be sure, even an incontestible mark is subject to challenge as generic.... However, registered marks are endowed with a strong presumption of validity, and a defendant has the burden of showing genericness by a preponderance of the evidence. Gen. Conf. Corp. Of Seventh-Day Adventists v. McGill, 617 F.3d 402, 415 (6th Cir. 2010) (quoting 15 U.S.C. 1115(b)). 18

19 The defendant in an action to protect a mark covered by an incontestable registration bears the burden of proof by a preponderance of the evidence and testimony if it wants: to pursue the cancellation of the registration on a ground permitted by Section 14; or to avail itself of the defenses set forth in Section 33(b)(1)-(9). 19

20 If proven, some Section 33(b) defenses and Section 14 grounds for cancellation will invalidate the plaintiff s mark and registration and also are common-law defenses on the merits, including: that the registered mark has been abandoned (ground for cancellation, Section 33(b) defense, and defense on the merits); that the registered mark is generic (ground for cancellation and defense on the merits); and that the registered mark is functional (ground for cancellation, Section 33(b) defense, and defense on the merits). 20

21 If proven, some Section 33(b) defenses and Section 14 grounds for cancellation may not invalidate the plaintiff s mark and registration and also may not be defenses on the merits, including: that the registration or its incontestable status was procured fraudulently (ground for cancellation and Section 33(b) defense only); that the registrant has misrepresented the source of the goods and services covered by the registration (ground for cancellation and Section 33(b) defense only); that the challenged use is a fair descriptive one (Section 33(b) defense and defense on the merits only); 21

22 If proven, some Section 33(b) defenses and Section 14 grounds for cancellation may not invalidate the plaintiff s mark and registration and also may not be defenses on the merits, including: that the registered mark has been used to violate the antitrust laws of the United States (Section 33(b) defense only); that the defendant enjoys prior use of its mark in particular geographic areas (Section 33(b) defense and defense on the merits only); that equitable principles, including laches, estoppel, and acquiescence apply (Section 33(b) defense and defense on the merits only); and 22

23 If proven, some Section 33(b) defenses and Section 14 grounds for cancellation may not invalidate the plaintiff s mark and registration and also may not be defenses on the merits, including: that the registered mark is deceptive (ground for cancellation only). 23

24 They are: the registration s value as evidence of validity in litigation to protect the mark; nationwide constructive notice of the registrant s rights under Section 22 of the Lanham Act, 15 U.S.C. 1072; nationwide constructive priority from the filing date of the application that matured into the registration under Section 7(c), id. 1057(c); and additional causes of action and remedies. 24

25 The additional causes of action and remedies available to federal registrants include: the federal cause of action for counterfeiting and the availability of statutory damages under Sections 32 and 35 of the Lanham Act, 15 U.S.C. 1114, 1117(c); and 25

26 Does your company routinely record its federal registrations with the Customs Service? Yes No 26

27 The additional causes of action and remedies available to federal registrants include: the federal cause of action for counterfeiting and the availability of statutory damages under Sections 32 and 35 of the Lanham Act, 15 U.S.C. 1114, 1117(c); and the availability of import-exclusion provisions such as Section 42 of the Lanham Act, 15 U.S.C. 1124, and Section 526 of Tariff Act of 1930, 19 U.S.C

28 Thank You Ted Davis Kilpatrick Townsend & Stockton LLP