Challenges may be made against an incontestable mark on the following grounds: that the mark was obtained fraudulently; that the mark has become generic; that the mark is functional; and that the mark owner abandoned the mark
An application to register a mark may be based on either an actual use of the mark in commerce or a bona fide intent to use the mark in commerce in the future. Accordingly, the application may be made under either (1) a use-based filing, or (2) an intent-to-use filing.
Registration creates a presumption that the mark is valid. That presumption may become conclusive (i.e., it may not be challenged) if the mark gains incontestable status. A mark becomes incontestable if the mark is in “continuous use” for five years from the registration date. Incontestable marks may not be challenged for lacking secondary meaning.
A use-based filing requires that the mark owner has already used the mark in commerce. Rights associated with the registration are effective as of the certificate of registration date.
An ITU application (if granted) enables an applicant to use a mark in commerce without anyone interfering with that use. The ITU reserves the applicant’s right to use the mark for six months from the filing date.
Intent-to-Use Application (ITU)
The first person to register a trademark receives priority everywhere in the United States, insofar as someone else has not already used the mark prior to the date of filing. This priority exists even in geographic areas where the mark owner (who registered) has never used the mark in commerce.
Publication & Opposition
If the PTO decides that a mark is eligible for protection, it publishes the mark in the Official Gazette of the USPTO. Members of the public who believe that they may be damaged by the registration of the mark, may file an opposition to oppose the registration.
After an applicant files an ITU, the PTO reviews it and if it grants the application, the PTO issues an NOA. The NOA provides an applicant six months to file a statement verifying actual commercial use of the mark. Up to five six-month extensions may be granted.
Notice of Allowance (NOA)
A mark owner may register her mark with the Patent & Trademark Office (PTO) on the Principal Register. If a mark owner does not register his mark, he may still enforce his trademark rights under the Lanham Act, which provides for enforcement of common law trademark rights.
Five years after registration, a mark owner must file an affidavit demonstrating his continued use of the mark (or explain a reason for non-use). The mark is then registered for ten additional years. A mark owner may renew his registration for additional ten-year terms. The trademark term may continue indefinitely.
Members of the public may challenge the validity of a mark that has been registered through a cancellation proceeding.
A senior user is the first person in the United States to actually use the mark in commerce. A junior user is a person who uses the mark in commerce (in the United States) subsequent to the senior user. A senior user and a junior user may or may not be using the mark in the same geographic area.
Senior & Junior Users
A user is frozen in his area at the point that another user registers his mark. In assessing the area that the frozen user may continue to use the mark, courts recognize that the area may extend slightly beyond that which captures actual uses in commerce by the frozen users. They recognize either a zone of natural expansion or a zone of reputation.
Extension of Frozen Areas
Zone of Natural Expansion
A zone of natural expansion represents the geographic area that captures the likely future expansion at the relevant time (i.e., the registration date).
Zone of Reputation
A zone of reputation represents the geographic area that captures the user’s established reputation.
Answer to Question 3
No, unless Barney files for an extension with the PTO. The PTO will automatically grant Barney a 6-month extension, without Barney needing to show good cause.
Answer to Question 4
(A). Yes. The fact that the PTO granted Shauna’s use-based application does not matter here. Jeremy had been using the mark in commerce previous to Shauna’s filing date. Jeremy therefore has priority over Shauna in the geographic area where Jeremy has been using the mark in commerce.
(B). Yes, insofar as Shauna has plans to enter the disputed area. Shauna’s filing with the PTO gives her constructive use throughout the United States where Jeremy had not previously made a use in commerce. Jeremy, however, does have rights to zones that may extend beyond his actual use of the mark in commerce. Specifically, some courts may recognize that he has rights to a zone of natural expansion, i.e., the area that represents his likely future expansion at the time of Shauna’s registration, or alternatively, to a zone of reputation, i.e., the area that represents his established reputation.
Bonnie owns a pizza restaurant that sells ready-made pizzas under the name PIZZA EATS. Since registering PIZZA EATS with the PTO, Bonnie has used it continuously for five years. She files the required paperwork to register PIZZA EATS as an incontestable mark. Bill is her competitor who begins using PIZZA EATS to advertise his pizza. When Bonnie sues Bill, he produces evidence that demonstrates that Bonnie’s mark lacks secondary meaning.
Question: Will Bill’s evidence deprive Bonnie of trademark protection in PIZZA EATS?
In 2014, Todd owns a business named INSPIRED PAINT, which sells religious paintings. Todd has not registered the mark with the PTO. In 2015, Emily files an ITU application for the same mark, INSPIRED PAINT, as a name for her business that will sell religious paintings. The PTO grants Emily’s ITU application, and so she enters the geographical area of Todd’s business to start selling paintings under the INPSIRED PAINT mark.
Question: Can Todd enjoin Emily from using INSPIRED PAINT in his established business area?
On January 1, 2015, Barney files an ITU application for the mark, WILD WIZARDS, for gymnastic equipment that he will sell. At that time, Barney is hopeful to make a use in commerce of the WILD WIZARD mark by May 2015. However, in June 2015, Barney anticipates that he will not be able to sell his equipment bearing that mark until August 2015. The reason for the delay is the simple fact that Barney has been lazy.
Question: Will Barney’s filing of the ITU application preserve Barney the right to make use of WILD WIZARDS in August 2015?
In 2012, Jeremy operates a business named EAGLE LANDING, which sells clothing. Jeremy has not registered EAGLE LANDING with the PTO. In 2015, Shauna files an application for the same mark, EAGLE LANDING, as a name for her business that has sold clothes under that name for one year. The PTO grants Shauna a trademark in EAGLE LANDING, and so she enters the geographical area of Jeremy’s business to start clothes under that name.
(A) Question: Can Jeremy enjoin Shauna from using EAGLE LANDING in his established business area?
(B) Question: Can Shauna enjoin Jeremy from using EAGLE LANDING outside the area of his business?
Answer to Question 1
No. Once a mark has gained incontestable rights, the mark may not be challenged for lacking secondary meaning.
Answer to Question 2
Yes. The fact that the PTO granted Emily’s ITU application does not matter here. Todd had been using the mark in commerce previous to Emily’s ITU filing date. Todd therefore has priority over Emily in the geographic area where Todd has been using the mark in commerce.