Select Page

University of North Carolina School of Law
Gerhardt, Deborah R.

Gerhardt – Trademarks – Fall 2016


Filing Basis

§ 1(a) – Applicant is already making actual use of the mark in commerce
§ 1(b) – Bona fide intent to use the mark in commerce in the near future
§ 44(d) – Applicant filed a foreign application to register within 6mo of its application to the PTO and claims the priority date of the foreign filing
§ 44(e) – Applicant possesses registration in the applicant’s country of origin
§ 66(a) – Applicant requests extension of protection of an international registration under the Madrid System for the international registration of marks

Stages – Application – Examination – Publication – Opposition – Registration

§ 1(b) requires additional “Statement of Use” before Registration
5 Basic Stages for Marks ALREADY IN COMMERCE:


Must identify the good/service with which the mark will be used
Must show a specimen showing the use of the mark in commerce (if filling a 1(a) application); if filling a 1(b): need not submit a specimen
Minimum requirements= name of the applicant, name and address for correspondence, a clear drawing of the mark, a listing of the goods/services, and the filing fee for at least one class of goods/services


Within about 3 months, an examining attorney will engage in a substantive examination of the application to determine if there are any absolute or relative grounds for refusal
If finds grounds for refusal= will send an “office action” to the applicant to explain the grounds for refusal—applicant has 6 months to Πrespond and amend its application to satisfy the examiner’s objections

Publication in the PTO’s Official Gazette

Weekly publication
Any party that believes it would be harmed by the registration has 30 days to file an opposition


Panel of 3 judges—may then appeal decision to a federal district judge or to the Court of Appeals


Issued a certificate of registration and notice of the registration is posted in the OG
If it’s an ITU app—applicant has 6 months (extendable to 3 years) to file a statement of use showing that it is making use of the mark in commerce


5 Steps above PLUS

4a – issuance by PTO of a “Notice of Allowance”
4b – applicant filing Statement of Use showing they have begun to make actual use of the mark in commerce

Advantages of Registration

§ 7(c) – Constructive nationwide priority on filing date
§ 7(b) – Prima facie evidence of validity, ownership, and registrant’s exclusive rights

§ 43(a)(3) – Registrant doesn’t bear burden to show non-functionality

Starts the clock on incontestability (§§ 15, 33)

Any time after the 5th year of registration, registrant can file a “declaration of incontestability” limiting grounds where the mark’s validity can be challenged

E.g., can’t challenge for lack of secondary meaning

§ 14 – Limits cancellation
Statutory damages against counterfeiters (§§ 35(c), 34(d)(1)(B)(i))
§ 42 – Right to request customs to bar importation of infringing goods

Maintaining Registration

Registration term is 10y (§ 8)

§ 8 – Affidavit of Continuing Use required during 6th & every 10th year
§ 9 – Renewal Application every 10th year

Affidavit of Incontestability (§15) filed w/in 1y of any 5y period of continuous use


§ 14 – For 5y after the date of registration, a 3rd party can petition to cancel the registration for any reason

After 5y, can only petition under reasons enumerated in § 14(3)

Mark is generic, functional, abandoned, fraudulently obtained, or contrary to § 2 (a)-(c)

NOTE: After 5y, can’t challenge based on lack of secondary meaning, confusingly similar to previously published mark – even if not incontestable
If at any time mark becomes generic name for good/service, is functional, or is abandoned then can petition to cancel

Madrid System: US has been a member since 2003—92 members—provides efficient means by which TM applicants/registrants may apply to register their marks at multiple foreign TM offices through a SINGLE application filed at their home TM office



Two basic causes of action – Likelihood of confusion and dilution
Trademark originates in the Commerce Clause – Regulation of “fair competition”

Posner – Encourages innovation and brand investment, reduces search costs
Brown – Creates monopolies, false signal of quality, focus on socially wasteful “status” goods
Problem – IP is non-rivalrous, non-excludable, and free-rider problems

Basic requirements – Distinctive, not barred, used in commerce



A mark must be distinctive (inherently or acquired) to be protectable
Abercrombie Spectrum

Fanciful – Coined/made up term (“Polaroid” camera)
Arbitrary – Arbitrary link to product (“Congress” spring water, “Sun” bank)
Suggestive – Link to product requires imagination (“Q-Tip” cotton swabs)
Descriptive – Requires secondary meaning for protection (“iPhone”)
Generic – Unprotectable (“Thermos,” “Aspirin”)

§ 14(c) – If a mark becomes common descriptive for an article, it is generic and no longer protectable

Basic Lanham Act

§ 1 (15 U.S.C. § 1051) – Actual use & intent to use registration process
§ 2 (15 U.S.C. § 1052) – Bars to registration
§ 32 (15 U.S.C. § 1114) – Infringement of registered marks
§ 43(a) (15 U.S.C. § 112

people were likely to buy the watch and know the brand

Louboutin v. Yves Saint Laurent (2d Cir. 2012)

Ford Survey Example

Test group shown red sole shoe drawing, control got blue sole
Asked whether they’ve purchased a show like this, then whether it was from a single brand, then whether they could ID the specific brand

JT Colby & Co. v. Apple Inc. (SDNY 2013)

Π owned “iBooks Inc.” – Sued Apple to stop them from using iBooks
Held: No secondary meaning

Applied factors – lack of sales success, lack of “brand association” in the book publishing industry, and non-exclusive use of the mark
Focus on normal consumers that would consider purchasing



One which refers, or has become to be understood as referring, to the genus of which the particular product is a species
Test: “Who-are-you/What-are-you?”

TM answers the buyer’s questions, “who are you, where are you from, who vouches for you?”
Generic answers “WHAT are you?”
If primary significance is to describe type of product, rather than producer, then TM is GENERIC and CANNOT be a VALID TM

Generic terms are UNREDEEMABLE by secondary meaning!
Pretzel Crisps

Anti-Dissection Principal: analyzing everything by individual terms removes the ability of phrases that would be disqualified due to containing all generic terms to have TM protection

) Foreign words translate to English

Thermos Survey

Describe general product – “Are you familiar with this type of product?”
If you were going to buy one tomorrow, what type of store would you go to?
When in the store, what would you tell the clerk you wanted?
Can you think of any other words to describe this product?
Criticism: Strong brand loyalty may prompt consumers to ask for the brand rather than provide the generic term for the product

Teflon Survey

Provide a series of names and ask whether respondent feels it is a “brand name” – i.e. one company – or a “common name” – i.e. genus of products
Ask whether respondent considers “washing machine a brand name
Continue with list of test items asking brand/common