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A Trademark Primer: Registration, Opposition, and Infringement

Last month, the United States Supreme Court released its decision in B&B Hardware v. Hargis Industries, in which the Court held that district courts should give preclusive effect to the Trademark Trial and Appeal Board’s (“TTAB”) finding that Hargis’s trademark SEALTITE was confusingly similar to B&B’s trademark SEALTIGHT. In plain terms, the Eighth Circuit held that the TTAB ruling could never bind the district court and the Supreme Court reversed, holding that the TTAB ruling may bind the district court under certain circumstances.

Although the Court’s specific ruling on issue preclusion may certainly have important effects down the road, the Court’s decision also provided a broad discussion of trademark law in general that provides a helpful primer in understanding trademark registration and protection.

The underlying principle of trademark protection is that distinctive marks such as words, names, symbols, and the like, can help distinguish one business’s goods from another’s. Trademark law helps ensure that businesses can profit from their hard-earned reputations and also gives customers assurance that they can depend on trademarks as reliable indicators of a product’s source.

Generally, one who first uses a distinct mark in commerce thus acquires particular rights to that mark. Those rights include preventing others from using the same mark. In 1946, Congress enacted the Lanham Act, which is the current federal trademark scheme. The Lanham Act creates two mechanisms to help protect trademarks. First, a trademark owner can register its mark with the Patent and Trademark Office (“PTO”). Second, a trademark owner can bring suit for trademark infringement in federal court.

The Lanham Act confers important legal rights and benefits on trademark owners who register their marks. For example, registration serves as notice of the registrant’s claim of ownership of the mark and is evidence of the registrant’s exclusive right to use the registered mark in commerce. To obtain registration, a mark owner files an application with the PTO. The PTO generally cannot register a mark which so resembles another mark so as to be likely to cause confusion, cause mistake, or deceive.

If a trademark examiner believes that registration is warranted, the mark is published in the Official Gazette of the PTO. At that point, any person who believes he would be damaged by the registration may file an opposition. Opposition proceedings occur before the TTAB, which consists of administrative law judges and high-ranking PTO officials.

Though similar in many respects to civil lawsuits in federal district court, TTAB proceedings are conducted only in writing, meaning there is no live testimony. When a party opposes registration because it believes the proposed mark is too similar to its own, the TTAB evaluates whether the proposed mark is likely to cause confusion in the marketplace.

The Lanham Act also creates a federal cause of action for trademark infringement. The owner of a mark, whether registered or not, can bring suit in federal court if another party is using a mark that too closely resembles the plaintiff’s mark. The parties then litigate under the federal rules of civil procedure, and the district court must determine whether the defendant’s use of the mark is likely to cause confusion with regard to the plaintiff’s mark. The district court will consider the full range of a mark’s usages, not just those in the mark’s application for registration.

In sum, federal trademark law provides mechanisms for businesses and individuals to protect the goodwill and reputation associated with their marks. Parties seeking to protect their marks may wish to seek the benefits that registration of a mark with the PTO provides. Additionally, a mark owner can protect its mark by opposing the registration of similar marks in front of the TTAB and also can bring infringement lawsuits in federal district court.

Submitted by Attorney Joel E. Engel III

May 14, 2015