USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
4. Trade Mark Registrations and Applications 4.1 Trade Mark Registration Trade mark rights in the US come from use, not merely 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 database. • 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 for - eign countries. • Right to sue in federal court. • Right to use the registration symbol, ®. • Right to record copyright with Customs to interdict infringing imports. Certain marks require acquired distinctiveness before they can achieve registration on the Prin - cipal Register (the differences between the Prin - cipal and Supplemental Registers are discussed in 4.2 Trade Mark Register ). These include: • descriptive word marks; • surnames; • geographically descriptive terms; • product design trade dress;
The deposit requirement differs for unpublished works and for certain other works. 3.9 Refusal of Registration If the USCO determines that the requirements for registration are not met, it will refuse the application. The most common grounds include the following: • The work lacks the minimum level of creative authorship. • Failure to submit a complete application, fee or deposit. • The work is not covered by copyright law. • The work lacks human authorship. • The work is not fixed in a tangible medium of expression. 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 regis - tration”. A supplementary registration does not replace the original registration or remove the information therefrom. Instead, it adds informa - tion 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.
• colours; • scents; • sounds; and • other non-traditional marks.
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