Last month, the US Supreme Court unanimously ruled against Steve Elster, who had applied to register the trademark TRUMP TOO SMALL for use in connection with shirts and hats.
The US Patent and Trademark Office had denied registration of the mark based on the “names clause,” a provision of the trademark law that prohibits registration of trademarks that include a name, portrait, or signature “identifying a particular living individual” without their written consent.
The Trademark Trial and Appeal Board affirmed the denial, but the Federal Circuit Court reversed it, holding that the names clause violates the First Amendment.
In recent years, the Supreme Court has held that two other provisions denying trademark registration violate the First Amendment, but the Court held that the names clause is different and does not violate the right to free speech.
Those cases involved the prohibition against registration of marks that are “disparaging” or contain “immoral … or scandalous matter.” The Court ruled that these prohibitions violate the First Amendment because they are based on viewpoint.
On the other hand, the names clause prohibits the use of a name, portrait, or signature identifying a particular living individual, regardless of whether that use is flattering, critical, or neutral.
Although the court upheld the constitutionality of the names clause, this clause only prohibits registration, not use, of a mark that includes someone else’s name, portrait or signature. In fact, the Court pointed out that the owner of an unregistered mark “may still use it in commerce and enforce it against infringers.”
This ruling is good news for those who are well known enough that a third party might want to use their names as part of their trademarks, but for anyone wanting to use a mark covered by the names clause, this case is a significant problem. This is because federal registration of a trademark confers important legal rights and benefits.
Protection from Cybersquatters
While there are numerous reasons to register your mark as soon as possible, one of the more significant is that it’s much easier to defend a federally registered mark against cybersquatters who might register domain names that are confusingly similar to your mark.
The Uniform Domain Name Dispute Resolution Policy (UDRP) provides a low-cost administrative method for resolving cybersquatting disputes. To establish a cybersquatting claim under the UDRP, the trademark owner must show that the domain is confusingly similar to its trademark, that the domain-name registrant has registered and is using the domain name in bad faith, and that the registrant has no legitimate interest in the domain name.
While you can use the UDRP process even if your mark wasn’t registered with the USPTO before the cybersquatter registered its domains, it’s much more difficult – and usually significantly more expensive – to prove your rights in the mark without such a registration.
If your mark isn’t federally registered, you’ll have to prove secondary meaning, that is, that your mark is a distinctive identifier of your goods or services.
Factors the UDRP arbitrators consider in determining whether a mark has a secondary meaning include the length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.
Note that, in order to avoid having to prove secondary meaning, your mark has to be registered before the cybersquatter registered the domain. Further, if a cybersquatter registers a trademark in a country where use of the mark is not required for registration (as it is in the US) and the cybersquatter registers first, it may very well prevail in the arbitration.
For these reasons, it’s important to register your marks as soon as possible.
Presumed Validity
Additional benefits of federal registration include the fact that a federal registration is considered “prima facie” evidence of the validity of your mark and your exclusive right to use it with the goods or services covered by your registration. If there is any litigation involving the mark, the mark is presumed to be valid, and the other side would have to overcome this presumption.
® Symbol
Only federal registration allows you to use the ® symbol. Use of that symbol provides you with the presumption that the unauthorized user knowingly violated your trademark rights and makes it more likely you’ll recover damages and attorneys’ fees for the infringement.
Incontestability
Perhaps most important, a federally registered trademark that has been in continuous and unchallenged use for a period of five consecutive years may become “incontestable.” That is, you can secure rights superior to those of a prior but unregistered user if the original user doesn’t object to your registration within five years and certain other requirements are met.
State Registration
Trademarks can also be registered under state law. State registration is usually faster and less expensive than federal registration, but state law protection of a trademark doesn’t extend beyond the borders of the state. Further, it doesn’t offer all of the benefits of federal registration.
Please feel free to contact us if you have any questions about, or need assistance with, registering or enforcing your trademarks.
Photo from TrumpTooSmall.com
