Trademarks may be protected by registration.
- Only after the mark is registered at the US PTO may the owner use the designation ® (federally registered). The use of the ® symbol may enhance the measure of damages recoverable in an action for trademark infringement.
- Excepted from registration in most countries are marks that are not distinctive or are deceptively similar to existing marks, and marks that violate public order or morality.
- The requirement of distinctiveness has been held to disqualify from protection trademarks, which are registered designation of plant varieties.
For example the attempt to register AR1 as ‘the name of a registered variety of ryegrass endophyte’
was rejected as this was already a registered plant variety and the test applied by the courts was whether a mark is one that other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.
The application process usually requires an examination by the granting office to ensure compliance with the formal registration requirements, as well as with the substantive requirement of distinctiveness.
There also has to be a check as to whether a mark is in conflict with prior rights. After the publication of an application, most countries provide for an opposition process whereby an interested third party may protest the registration of a mark, usually on the grounds of prior rights or deceptive similarity with another mark.
Upon acceptance of a mark, registration is conferred for a term of between 10 and 20 years, with a possibility for renewal. A mark will expire if a renewal is not sought. Expungement of a mark may also be sought where its use becomes deceptive or where the mark becomes generic of goods or services.
‘Vaseline’ and ‘gramophone’ are two examples of marks that became generic descriptions of the type of goods to which they were appended.