USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
If an application is refused, the applicant may request reconsideration by submitting a written response. If unsuccessful, the applicant may make a second request for reconsideration to the USCO Review Board. A further appeal may be filed by bringing a federal lawsuit to seek to compel the USCO to issue the registration. This decision can be further appealed to the US Courts of Appeal. An error in a copyright registration can frequently be corrected by filing a “supplementary registration”. A supplementary registration does not replace the origi - nal registration or remove the information therefrom. Instead, it adds information to the public record to clarify it. 3.10 Related Rights Copyrights may coexist with trade marks and other related rights. For example, a logo may be protected by a trade mark, and the artwork within the logo may be protected by copyright if it rises to the minimum level of creativity. Trade mark rights in the US come from use, not mere - ly registration. Registration is therefore not required, although there are benefits including the following: • The listing of the trade mark in the United States Patent and Trademark Office (PTO) search data - base. • Legal presumption of validity, ownership, and the right to use the mark nationally. After a mark is registered more than five years and a declaration of incontestability is filed, the presumption can be “conclusive”, providing further advantages. • Basis to seek registration and priority in foreign countries. • Right to sue in federal court. • Right to use the registration symbol, ®. • Right to record copyright with Customs to interdict infringing imports. 4. Trade Mark Registrations and Applications 4.1 Trade Mark Registration
Certain marks require acquired distinctiveness before they can achieve registration on the Principal Regis - ter (the differences between the Principal and Sup - plemental Registers are discussed in 4.2 Trade Mark
Register ). These include: • descriptive word marks; • surnames; • geographically descriptive terms; • product design trade dress;
• colours; • scents; • sounds; and
• other non-traditional marks. 4.2 Trade Mark Register The US’s trade mark register is public and searchable at the US Patent and Trademark Office website. PTO web searches have technical limitations. Com - prehensive commercial databases are available to search the federal and state records and common law usage. The trade mark register consists of two registers, the Principal and the Supplemental. The Supplemental Register is for marks that are capable of distinguish - ing source but do not do so today. Marks registered on the Supplemental Register, like those registered on the Principal Register, may be identified with the ® symbol and are protected against infringements and later-filed applications. Marks filed under the Madrid Protocol and intent to use applications for which an amendment to allege use has not been filed are not eligible for the Supplemental Register. The Principal Register contains all the benefits of fed - eral registration referenced in 4.1 Trade Mark Regis- tration . In addition to the federal register, states have state registers for trade marks filed for state trade mark protection. Some are publicly available online, while others are not. 4.3 Term of Registration The registration term is ten years.
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