â symbol (encircled R) :
The encircled-R, or “®,” is a symbol that designates a specific trade or service mark as a federally registered trademark under the Trademark Act. In order to use this symbol a mark must be currently registered on either the Principle or Supplemental Registers maintained by the U.S. Patent and Trademark Office (USPTO). Willful use of the encircled-R on a non-registered mark may jeopardize future registerability status with the USPTO, and may be evidence of bad intent, which is frowned upon by the courts.
Recording assignments :
Recording of an assignment with the U.S. Patent and Trademark Office (USPTO) is not mandatory, but is generally a good idea, so as not to invite the argument that inadvertent abandonment occurred, and to provide accurate notice enabling courts to award treble damages and costs. Only assignments of registered marks can recorded. The assignor or assignee may submit the recordation, which should include the USPTO cover sheet, assignment document, and the $100 fee.
Recording registration with U.S. Customs :
Recording a trademark allows U.S. Customs to interdict the importation of counterfeit goods, goods with infringing marks, and gray-market goods. The government fee for recordation is $190, and the process involves providing the appropriate information on corporate stationary to: Intellectual Property Rights Branch, U.S. Customs Service, 1301 Constitution Avenue, N.W., Franklin Court, Washington, D.C. 20229. For more information on how to record, see the INTA publication entitled, Practitioner’s Guide to the Recordation of Trademarks with Customs in the U.S. and the E.E.C., edited by June Gardner Kolbert and David Allen Latham. You may order this publication directly from the INTA at http://www.inta.org/publindx.htm#country2ed
Register, (Principal) :
This is the primary registry of trademarks maintained by the U.S. Patent and Trademark Office (USPTO). In order to qualify for registration on the Principal Register, a trademark must be distinctive and currently in use. Trademarks that qualify for Principal Register registration receive the all the benefits of registration, whereas those registered on the Supplemental Register do not.
Register, (Supplemental) :
The Supplemental Register is a secondary list of registered marks maintained by the USPTO. Marks on the Supplemental Register do not qualify for registration on the Principal Register, and as such, these marks do not receive the many benefits of registration available on the Principle Register. However, registration on the Supplemental Register allows the mark owner to use the ® symbol next to their mark, and also provides notice to potential users of the mark that it is already being used. Typically, Supplemental Register marks are those that are registered in foreign countries but not yet used in the United States, and those that are not descriptive. Once a mark becomes distinctive through extensive use, or has been on the Supplemental Register for five years, the mark owner may petition to have it removed to the Principal Register.
Registration :
A registration is a grant of rights by the government in a given trademark. Registrations are granted by the Federal government, as well as most state governments. An application for registration requires providing data in the following categories: dates of use, description of goods or services, designation of class, drawing of mark, identification of applicant, specimens, and verification and execution.
Rejection by the Trademark Examiner :
An initial refusal to register a mark made by the U.S. Patent and Trademark Office (USPTO) Examining Attorney. Marks may be rejected for several reasons, including that the mark is likely to cause confusion with other marks, is not distinctive, is generic or forbidden, or for inadequacies of the application itself such as a description of goods that is too vague, or specimens that don’t demonstrate use for the claimed goods or services. If the mark is rejected, the Examining Attorney will send an office action to the trademark owner or their attorney. The owner or attorney then have the opportunity to respond within six months, or the application is automatically canceled.
Remedies for infringement :
Depending on one’s perspective, a remedy may either be the penalty applied when found liable for infringement or dilution of a trademark, or the relief that the trademark owner may obtain under such circumstances. Remedies available include: injunctive relief to stop use of the mark, monetary relief, a bar on importation, cancellation of trademark registration, criminal indictment, a declaratory judgment, or other equitable relief as the court may see fit.
Reserving a name (Name reservation) :
Registering the name of a business with the state in order to reserve that name for the business owner. Most states will reserve a name that is not an exact duplicate of an existing name, with no attention given to confusingly similar names. For this reason, it is not sufficient to search a state’s database of existing business names to determine whether or not there is a preexisting trademark right.
Response :
A reply from a trademark applicant to the U.S. Patent and Trademark Office (USPTO) after the USPTO has sent the applicant an initial refusal of registration (office action). A response is due after six months of receiving the office action, or else the application will be deemed abandoned.
Reverse confusion :
Unlike typical consumer confusion in which the second (junior) user of a mark “cashes in” on the goodwill generated by the first (senior) user of that same mark, reverse confusion occurs when the second user becomes better known than the first user. Thus, the first user looses the opportunity to control its own reputation and goodwill. Consumers may even disrespect the first user assuming the second user is the original, while the first user is merely a copycat. The first user is virtually always the prevailing party in any trademark litigation.
Reverse Domain Name Hijacking
This occurs when corporations intimidate people or companies out of their domain names under the guise of trademark ownership, even though the particular use of a domain name does not constitute trademark infringement, dilution, or unfair competition in any manner. Some trademark legal scholars have speculated that this reverse domain hijacking may be met with cancellation of the company’s mark under the doctrine of trademark misuse.
Right of priority :
The right to exclude all other confusingly similar uses of a mark based on having been the first to use that mark.
