|
R
|
â
symbol (encircled R)
The encircled-R, or "®," is a symbol that designates a
specific trade or service mark as a federally registered trademark under
the Trademark Act. In order to use this symbol a mark must be currently
registered on either the Principal or Supplemental Registers maintained
by the U.S. Patent and Trademark Office (USPTO). Willful use of the
encircled-R on a non-registered mark may jeopardize future
registerability status with the USPTO, and may be evidence of bad
intent, which is frowned upon by the courts.
|
Reasonable
reliance on licensee
Reasonable reliance on licensee's quality control provisions has been
held by some courts as sufficient to meet the requirement of trademark
licensing of maintaining quality control over licensed uses of a
trademark.
|
Reciprocal Treatment
One approach for determining how citizens of a treaty nation should be
treated by the government of another member nation.
|
Recording
assignments
Recording of an assignment with the U.S. Patent and Trademark
Office (USPTO) is not mandatory, but is generally a good idea, so as not
to invite the argument that inadvertent abandonment
occurred, and to provide accurate notice
enabling courts to award treble
damages and costs. Only assignments of
registered marks can recorded. The assignor
or assignee
may submit the recordation, which should include the USPTO cover sheet,
assignment document, and the $100 fee.
|
Recording
registration with U.S. Customs
Recording a trademark
allows U.S. Customs to interdict the importation of counterfeit goods,
goods with infringing marks, and gray-market goods. The government fee
for recordation is $190, and the process involves providing the
appropriate information on corporate stationary to: Intellectual
Property Rights Branch, U.S. Customs Service, 1301 Constitution Avenue,
N.W., Franklin Court, Washington, D.C. 20229. For more information on
how to record, see the INTA publication entitled, Practitioner's Guide
to the Recordation of Trademarks with Customs in the U.S. and the E.E.C.,
edited by June Gardner Kolbert and David Allen Latham. You may order
this publication directly from the INTA at http://www.inta.org/publindx.htm#country2ed
|
Register,
Principal
This is the primary registry of trademarks maintained by the U.S.
Patent and Trademark Office (USPTO). In order to qualify for
registration on the Principal Register, a trademark must be distinctive
and currently in use. Trademarks that qualify for Principal Register
registration receive the all the benefits
of registration, whereas those
registered on the Supplemental
Register do not.
|
Register,
Supplemental
The Supplemental Register is a secondary
list of registered marks maintained by the USPTO. Marks on the
Supplemental Register do not qualify for registration on the Principal
Register, and as such, these marks do not receive the many benefits
of registration available on the
Principal Register. However, registration on the Supplemental Register
allows the mark owner to use the ® symbol next to their mark, and also
provides notice to potential users of the mark that it is already being
used. Typically, Supplemental Register marks are those that are
registered in foreign countries but not yet used in the United States,
and those that are not descriptive. Once a mark becomes distinctive
through extensive use, or has been on the Supplemental Register for five
years, the mark owner may petition to have it removed to the Principal
Register.
|
Registration
A registration is a grant of rights by the government in a given
trademark. Registrations are granted by the Federal government, as well
as most state governments. An application for registration requires
providing data in the following categories: dates of use, description of
goods or services, designation of class, drawing of mark, identification
of applicant, specimens, and verification and execution.
|
Rejection by the
Trademark Examiner
An initial refusal to register a mark made by the U.S. Patent and
Trademark Office (USPTO)
Examining
Attorney. Marks may be rejected for several reasons, including that
the mark is likely to
cause confusion with other marks, is not distinctive,
is generic
or forbidden,
or for inadequacies of the application itself such as a description
of goods that is too vague, or specimens
that don't demonstrate use for the claimed goods or services. If the
mark is rejected, the Examining Attorney will send an office
action to the trademark owner or their attorney. The owner or
attorney then have the opportunity to respond
within six months, or the application is automatically canceled.
|
Relatedness
Unless products are sufficiently related to one another, there can be no
trademark infringement.
Relatedness refers to the degree to which products are sufficiently
similar to each other to constitute infringement. Relatedness of
goods or services is not a consideration in determining trademark dilution
of famous marks.
|
Remedies for infringement
Depending on one's perspective, a remedy may either be the penalty
applied when found liable for infringement or dilution of a trademark,
or the relief that the trademark owner may obtain under such
circumstances. Remedies available include: injunctive
relief to stop use of the mark, monetary
relief, a bar
on importation, cancellation
of trademark registration, criminal indictment, a declaratory judgment,
or other equitable
relief as the court may see fit.
|
Reserving a name (Name
reservation)
Registering the name of a business with the state in
order to reserve that name for the business owner. Most states will
reserve a name that is not an exact duplicate of an existing name, with
no attention given to confusingly
similar names. For this reason, it is not
sufficient to search a state’s database of existing business names to
determine whether or not there is a preexisting trademark right.
|
Response
A reply from a trademark applicant to the U.S. Patent and
Trademark Office (USPTO) after the USPTO has sent the applicant an
initial refusal of registration (office
action). A response is due after six months of
receiving the office action, or else the application will be deemed
abandoned.
|
Reverse
confusion 1.14,
7.26
Unlike typical consumer
confusion in which the second (junior) user of a mark "cashes
in" on the goodwill generated by the first (senior) user of that
same mark, reverse confusion occurs when the second user becomes better
known than the first user. Thus, the first user looses the opportunity
to control its own reputation and goodwill. Consumers may even
disrespect the first user assuming the second user is the original,
while the first user is merely a copycat. The first user is virtually
always the prevailing party in any trademark litigation.
|
|
Reverse Domain Name Hijacking
This occurs when corporations intimidate people or companies out of
their domain
names under the guise of trademark ownership, even though the
particular use of a domain name does not constitute trademark infringement,
dilution, or unfair competition in any manner. Some trademark legal
scholars have speculated that reverse domain hijacking may be met
with cancellation
of the company's mark under the doctrine of trademark
misuse. Additionally, victims of reverse domain name hijacking
now have a specific cause of action under the new anti-cybersquatting
legislation signed into law on November 29, 1999.
|
Right of priority
The right to exclude all other confusingly similar uses
of a mark based on having been the first to use that mark.
|
|
|
