Trademark and Unfair Comp. Boston College Law School October 5, 2004 Registration

Advantages of Registration Nationwide constructive use - priority Nationwide constructive notice Possibility of achieving incontestability Presumption of validity at trial Right to sue in federal court Availability of extra remedies (e.g. attorney fees, treble damages, border exclusion …)

Registration Process Clearing the trademark Start use or have bona fide intent to use File application Examination by PTO Publication in Official Gazette Registration –Or if intent to use, notice of allowance and later filing of statement of use; then registration

Additional Issues Principal v. Supplemental Register Foreign registrations Trademark registration maintenance

Bars to Registration Lanham Act §2: –(a) Immoral, scandalous, deceptive; disparages –(b) Flag, coat of arms, insignia of U.S., state, etc. –(c) Name, portrait, signature of living individual –(d) Likely to cause confusion with other mark –(e) Consists of mark that is: (1) merely descriptive or deceptively misdescriptive (2) primarily geographically descriptive (3) primarily geographically deceptively misdescriptive (4) primarily a surname (5) functional

Bars - Immoral, Scandalous Lanham Act §2: –Shall register mark unless it: “(a) Consists of or comprises immoral, deceptive, or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute”

In re Bad Frog Brewery

Scandalous or Immoral? Yes –MADDONA (wine) –MESSIAS (wine) –BUBBY TRAP (bras) –BULLSHIT (briefcase) –Picture of defecating dog (t-shirts) No –BUDDA (beachwear) –BIG PECKER (t-shirt) –WEEK-END SEX (magazine) –BLACK TAIL (adult magazine)

Harjo v. Pro-Football, Inc.

Other Examples

Administrative Details Next Assignment –Finish IV.B - Bars to Registration