Verify the Right to Use (Does someone else have a specific prior right to use?)

or Exclusive Right to Use (Do others have a general right to use?)


The following are examples of Right To Use/Right to Register issues in a trademark application but this is not an exhaustive list.


Principal Registration or prior-pending applications: Under Section 7(b), registrations on the Principal Register are prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner's ownership of the mark, and of the owner's exclusive right to use the registered mark in commerce . . . subject to any conditions or limitations stated in the certificate." A trademark examiner can cite specific prior registrations or prior pending applications that may issue into registrations against an applicant’s right to register a mark.  A thorough trademark search (that some might call a right to use search) might reveal some or all of the prior marks that a trademark examiner might cite against a particular application in order to determine if an applicant has a right to register. Prior registrations and prior-pending applications may be cited and characterized by trademark owners in an opposition or cancellation proceeding as ‘right to use’ issues even though the TTAB Board only has a right to determine ‘right to register’ (opposition) or ‘right to registration issues (cancellation)’.


Disclaimers: Disclaimers in a trademark application or registration are statements of a lack of exclusive right to use the particular term disclaimed. Disclaimers are required for generic or descriptive words that would otherwise be unregisterable because competitors in general have a right to use generic or descriptive words to describe their products or services. A thorough trademark search might reveal some or all of the disclaimers that a trademark examiner might require in a particular application if the searcher looks at the actual records of each mark but this information would not be normally in lists search results. But, failure to disclaim is generally not a fatal issue, just a refusal and delay, if the applicant follows the examiner’s suggestions. Examiner’s will sometimes issue examiner’s amendments for disclaimers after speaking to an applicant rather than issue a refusal. Failure to answer a disclaimer refusal will result in the mark going abandoned.


Common Law: Trademark examiners do not examine common law marks to determine if there is a likelihood of confusion with a prior-used common law mark. The owner of the common law mark may use the opposition process or cancellation process (inter partes proceeding) to try to stop or cancel a registration that they believe would harm their specific rights of prior right to use or may use an opposition or cancellation proceeding to protect their specific right to use generic or descriptive words in a generic or descriptive manner.   A thorough trademark search of common law marks may decrease the risk of a prior user using an opposition or cancellation proceeding to stop a registration or cancel a registration. Most free databases do not contain common law marks except that many states allow users to search their state trademarks and state licenses and business names online for free. Searching each state individually may be time prohibitive. Search engines such as Google, Yahoo, Bing, etc. index web sites containing common law business names and goods and services but the large number of search results for any given search may make this type of common law trademark searching time prohibitive and there is no requirement that a trademark owner use the internet to advertise but search engines can be a great supplemental source of information on prior use of a mark.


Supplemental Registrations: A Supplemental Registration can be used by the trademark examiner to refuse a later filed mark because of a likelihood of confusion because it is an ex partes proceeding, this is a benefit of federal registration. But, a Supplemental Registration does not carry this presumption in an inter parties proceeding.  [This decision] distinguishes inter partes cases from ex parte cases, where, as noted, a mark on the Supplemental Register can be cited as a basis for refusing registration to another mark under Section 2(d) of the Act pursuant to Clorox. We believe that this distinction is consistent with the Act and the differences between ex parte examination and inter partes proceedings. In the ex parte context, the Office does not and cannot question the validity of a mark in a registration cited against another under Section 2(d). By contrast, in the inter partes context, under Otto Roth, a petitioner or opposer must establish the validity of a mark it asserts against a pending application or existing registration in order to prevail on a claim of likelihood of confusion. See, Copperweld, 200 USPQ at 474; see also, Towers v. Advent Software, 913 F.2d at 942, 16 USPQ2d at 1042 ("To the extent there is a different result in an ex parte proceeding if the first term is registered on the Supplemental Register, such a result may be an added advantage of federal registration.") (citing Universal Foods Corp. v. Otto Roth & Co., 215 USPQ 1140, 1143-44 (TTAB 1982)). OTTER PRODUCTS v. BASEONELABS (TTAB 2012). See How to Search For Marks on the Supplemental Register.


Surname Refusals or Oppositions: A surname is one example where an individual trademark owner may run into a right to use issue that could also be characterized as a right to register issue. (A trademark owner’s right to register may be precluded because of another’s (everyone’s rather than a specific party) right to use issue.)

Section 2(e)(4) of Trademark Act precludes registration of a mark which is "primarily merely a surname" on the Principal Register without a showing of acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f). The spirit and intent behind the statutory policy that a surname is not inherently distinctive and requires a showing that consumers have come to recognize the surname as an indicator of source is rooted in common law principles. The statute . . . reflects the common law that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use which changes its significance to the public from a surname of an individual to a mark for particular goods or services. The entire Act indicate[s] that Congress intended to codify the law of unfair competition in regard to the use of personal names as it has been developed by the courts. . . . At common law it was held that every man had an absolute right to use his own name.'" Evidence of "long and exclusive use which changes its significance to the public from a surname of an individual to a mark for particular goods or services" is necessary because surnames are shared by multiple individuals, and each individual may have an interest in using his/her surname in connection with his/her business. Section 2(f) underscored the common law by requiring an applicant's use to be "substantially" exclusive . . . If someone else has been using the mark in public and an applicant is aware of this, applicant cannot in good faith submit a verified statement with an affidavit or signed declaration under 37 C.F.R. § 2.20 that the mark has become distinctive of goods or services through "substantially" exclusive use in commerce. [Internal citations omitted] MILLER v. MILLER, (TTAB 2013). Surnames are categorized as potentially being merely descriptive marks. How does the USPTO determine if a surname is common enough to be merely descriptive and issue a surname refusal? The census. See http://www.census.gov/genealogy/www/data/2000surnames/index.html for a list of the most common surnames. A trademark search would not identify whether or not a potential trademark was a surname.



Verifying the “Right to Use” is just one step in a Not Just Patents® Verification Process.

To Verify a potential trademark is strong, available to use, and ready to register, we do much more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, Not Just Patents recommends our service and our Five-Step Verification process:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.

See VerifyATrademark.com for more information on our Five-Step Verification Process. See Why Should I Have A Not Just Patents Trademark Attorney Answer My Office Action if you have already applied and been refused.


























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