THE TRADEMARK ACT
The Lanham Act, 15 U.S.C. Section 1051 et seq., was extensively revised by Congress. President Reagan signed the bill into law on November 16, 1988. The effective date of the Act was on November 16, 1989. The Commissioner of Patent and Trademarks has been issuing new regulations governing administration of the new law which includes specific procedures and guidelines and a new fee schedule that became effective on December 16, 1991. How some provisions are actually applied maybe affected by the new regulations and/or judicial interpretation after the Act becomes effective. It represents the most comprehensive and significant revision of the Lanham Act in the past 40 years. The general purpose of the legislation is to encourage greater use of the trademark registration system by providing a registration procedure consistent with current business practices. Some of the more significant aspects of the Act are discussed below under Paragraphs I, II, and III.
I. Intent-to-Use Application Procedure
The most important revision to existing trademark law is the creation of a new intent-to-use application procedure. Under the new procedure, an applicant can file and application for registration of a mark based upon a "bona fide intention to use the mark in commerce," as opposed to actual use in commerce. In effect, the new intent-to-use procedure will permit an applicant to "reserve" a mark by filing an application with a bona fide intent to use the mark in the future. The Trademark Office will examine the application and, if satisfied, publish the mark for opposition ordinarily only after a mark has been used in interstate commerce. If there is no opposition, the Trademark Office will issue a formal Notice of Allowance granting the applicant a six-month period to file a verified statement affirming that the mark is in actual use in commerce along with specimens of the mark as used. The allowance period may be extended for six additional months upon request, and twenty-four additional months are available upon a showing of "good cause." Upon approval of the applicant's verified statement that the mark is in actual use in commerce, a formal Certificate of Registration will be issued. Upon registration under the intent-to-use procedure, a registrant will obtain nationwide priority as of the filing date of the application against all persons except any third party who: (1) prior to the applicant's filing date has actually use the mark or a confusingly similar mark or has filed an intent-to-use application or (2) obtains an earlier effective filing date under Section 44 of the Lanham Act.
II. Registration, Renewal, Use in Commerce and Abandonment Pruning Deadwood
In an effort to eliminate "deadwood" from the Trademark Register, the Act contains new definitions of "use in commerce" and abandonment as well as revisions to registration and renewal terms and maintenance procedures. Under the act, "use in commerce" is defined as a "bona fide use of a mark in the ordinary course of trade and not made merely to reserve a right in the mark." However, consistent with the purpose of the intent-to-use provisions, it is intended that the new definition of use in commerce will include genuine, but less traditional, uses such as test marketing the ongoing shipment of new drugs prior to FDA approval and limited use necessitated by size, expense, or the seasonality of the goods and services. The Act also reduces the terms of registration and renewal from 20 years to 10 years and strengthens the requirements for affidavits of use under Section 8 of the Act. After the effective date of the Act, such affidavits must contain a verification that the mark is in actual use on all the goods or services identified in the registration and evidence of such use. Additionally, the definition of abandonment has been revised to include the new definition of use in commerce. Therefore, a token use for the purpose of maintaining registrations of old marks will not be sufficient to prevent a finding of abandonment.
III. False Advertising Claims
Section 43(a) of the Lanham Act, the federal unfair competition statute, has been revised to broaden the remedy for false advertising. The amendments extend the scope of Section 43(a) to prohibit, in addition to false and misleading statements of one's own product, misrepresentations concerning others. Furthermore, the various remedy sections of the Lanham Act (Sections 34,25 and 36, 15 U.S.C. 1116, 1117 and 1118) have been amended to specifically refer to Section 43(a), thus making it clear that equitable and monetary relief is available in Section 43(a) actions, including claims involving unregistered marks.
