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Trademarks: Application & Registration

    Section 1051(a) (see below) contains the basic requirements for the registration and verification of a mark. It is should be made clear however (see What constitutes a mark?) that the selection of an appropriate mark is a process that requires a significant amount of due diligence if problems are to be avoided going forward. In general, the selection of a "fanciful" mark will prove to be less problematic, but in any case a trademark search must be conducted in order to ensure that (to the degree possible) the mark selected is not "confusingly similar" to another in its designated class. In addition, many Internet sites are likely to be ambitious enough to want to do business both nationally and internationally (at least many will not want to rule out the latter). In this case a trademark search will need to be conducted not only with the USPTO (and other state and common law sources) but, in addition, an international search will be required as well.

    § 1051. Application for registration; verification

    (a) Application for use of trademark

    (1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.

    (2) The application shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.

    (3) The statement shall be verified by the applicant and specify that—
    (A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be registered;
    (B) to the best of the verifier’s knowledge and belief, the facts recited in the application are accurate;
    (C) the mark is in use in commerce; and
    (D) to the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall—
    (i) state exceptions to the claim of exclusive use; and
    (ii) So specify, to the extent of the verifier’s knowledge—
    (I) any concurrent use by others;
    (II) the goods on or in connection with which and the areas in which each concurrent use exists;
    (III) the periods of each use; and
    (IV) the goods and area for which the applicant desires registration.

    Comments: Remember that a mark is not "acquired" via the registration process but is rather acquired via "use." Registration is a process (both nationally and internationally) that enhances the rights of the holder. The USPTO maintains two trademark registers, a "Principal Register" and a "Supplemental Register." Most of the advantages of registration are obtained via registering in the Principal Register. Some of these advantages include: (1) nationwide priority (protection in the entire U.S.); (2) incontestability (provides protection against certain kinds of attack after a set period of time); (3) right to sue in federal court; (4) recovery of money damages (possibly treble damages & attorney's fees); (5) protection from inappropriate importation and more.

    Comments: It is also important to remember that the lack of due diligence with respect to an adequate trademark search could prove to be quite costly (see International Star Class Yacht Racing Association v. Tommy Hilfiger U.S.A., Inc.,  (2d Cir. 1996) and the related analysis here). That said, neither the USPTO or the Lanham Act require a trademark search, however, the courts (as in Hilfinger) may use lack of search as evidence relevant to "bad faith" infringement.



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