Although U.S. common law trademark rights are gained through use of the mark in commerce (without registration), registration of a trademark with the U.S. Patent and Trademark Office (“USPTO”) provides the owner with additional rights and benefits. These include nationwide enforcement of the mark against infringers; constructive notice of the registrant’s claim of ownership of the mark; evidentiary presumptions of the validity of the mark, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in commerce on or in connection with the goods or services in the registration; the status of “incontestability” once the mark has used in commerce for five years after registration; and the ability to stop importation of infringing goods into the U.S.
However, the U.S. Lanham Act (15 U.S.C. 1051), which provides for federal registration of marks, contains a number of provisions barring the registration of certain kinds of marks. In addition to barring registration of marks confusingly similar to other registered marks or merely descriptive of the goods or services, the Act also prevents registration of marks comprising “immoral, deceptive, or scandalous matter”; marks that “disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”; a “geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods”; a mark that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation”; or a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow” except by written consent. Continue Reading