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Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Subject to certain exceptions – especially the ability of an applicant to secure priority through the filing of an intent-to-use application – ownership of a trademark is determined on a first-to-use basis.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

An unregistered trademark (also known as a common law trademark) is protectable under Section 43 of the Trademark (Lanham) Act (15 USC §1125). However, except in certain circumstances, unregistered trademark rights are limited in scope and enforceable only within the geographic region in which the trademark is used or is known by consumers. A significant difference between a registered trademark and an unregistered trademark is that the latter is not presumptively valid. Therefore, to sue for infringement of an unregistered trademark, the rights holder must prove that it owns a valid trademark.

How are rights in unregistered marks established?

The owner of a distinctive and non-functional mark can establish common law rights by using the mark in commerce. Common law trademark rights are enforceable in state and federal courts based on the Lanham Act. The owner of an unregistered trademark can use the mark with the designation ‘TM’ (trademark) or ‘SM’ (service mark), which serves as notice to the public of the trademark owner’s claim of rights.

Are any special rights and protections afforded to owners of well-known and famous marks?

A famous mark enjoys broader protection than a mark that is not famous. In addition to a trademark infringement claim, the owner of a famous mark can sue for likely dilution under Section 43(c) of the Lanham Act and can stop use of a junior trademark even if this is used in connection with unrelated goods and services. However, US law generally does not protect famous and well-known marks (as that phrase is used in the World Intellectual Property Organisation’s Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks.

To what extent are foreign trademark registrations recognised in your jurisdiction?

As a member of the Paris Convention, the United States provides under Section 44 of the Lanham Act for the registration of marks which have been applied for or registered in a convention member’s country of origin. A foreign registration or pending application can also serve as the basis for extending protection to the United States through the Madrid Protocol. Generally, ownership of a foreign trademark registration is insufficient to overcome a preliminary refusal of registration of a mark in the United States or to prevail in an enforcement action against an infringing use in the United States.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

Registration is not a prerequisite for trademark rights; rights are established through use of a mark. Nevertheless, registration affords a legal presumption of the registered mark’s validity and nationwide priority of rights dating to the filing date of the registrant’s application. It also serves as constructive notice of the registrant’s claim of ownership. Owners of registered marks may:

  • use the ‘®’ symbol;
  • protect their marks in federal court;
  • obtain certain remedies not otherwise available; and
  • use the US registration as basis for applications abroad.

Who may register trademarks?

Any natural person or entity that uses a mark or has a bona fide intention to use a mark may apply to register its mark.

What marks are registrable (including any non-traditional marks)?

Subject to certain exceptions, any distinctive and non-functional word, symbol, drawing or combination thereof may be registered. In addition, certain product shapes, packaging, slogans, colours, sounds, fragrances, flavours and other non-visual matter can be registrable.

Can a mark acquire distinctiveness through use?

Yes. Non-inherently distinctive marks can be registered on the Principal Register on proof of acquired distinctiveness.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

A mark may be refused registration if:

  • the application does not comply with the filing requirements;
  • the mark lacks acquired distinctiveness and is:
    • merely descriptive;
    • primarily geographically descriptive;
    • primarily merely a surname; or
    • deceptively mis-descriptive;
  • the mark is likely to be confused with a prior registered mark;
  • the mark is deceptive;
  • the mark is primarily geographically deceptively mis-descriptive;
  • the mark is immoral or scandalous;
  • the mark may disparage a person, institution, belief or national symbol;
  • the mark falsely suggests a connection with a person, institution, belief or national symbol;
  • the mark consists of or comprises the flag or coat of arms or other insignia of the United States or any state or municipality, or any foreign nation;
  • the mark consists of or comprises a name, portrait or signature identifying a particular living individual (except by his or her written consent) or the name, signature or portrait of a deceased president of the United States during the life of his widow, if any (except with the widow’s written consent; or
  • the mark is functional.

Are collective and certification marks registrable? If so, under what conditions?

Yes.

Applications for collective and collective membership marks must specify how the applicant regulates and controls the use of the mark by its members. Collective membership mark applications must also include information on the nature of the membership organisation.

Certification mark applications must identify what the applicant is or will be certifying, a copy of the certification standards used in that process and the applicant’s confirmation that it is not and will not engage in the manufacture or promotion of goods or services under the mark, but will only advertise or promote the certification programme under the mark.

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