Insight: trademark registration in USA

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Registration of marks

Trademark owners apply to the USPTO for federal registration of their marks. Applications may be filed on a use basis or an intent-to-use basis. But the USPTO will not issue a trademark registration until the applicant has submitted a declaration of use of the mark in commerce and proof of use is filed and accepted. There is a limited exception to this rule for registrations based on a non-US registration under international conventions, although foreign entities still must submit proof of use between the fifth and sixth years after the issue date of the registration. Other parties may also petition to cancel the registration based on abandonment by non-use after the three-year statutory presumption of abandonment has passed from the date of registration.

If a trademark owner is actually using the mark in commerce at the time of application for federal registration, it may file an application for registration on the basis of use. This application is assigned to a USPTO trademark examiner who oversees the prosecution of the application. If the examiner does not raise any objections to the application as filed, no third parties file extensions of time to oppose and no oppositions are lodged against the application, then registration should issue between 12 and 18 months after the application is filed.

If the examiner determines there are issues impacting registrability of the applied-for mark, the USPTO issues office actions to inform the applicant of those issues and invite the applicant to respond. Such office actions may delay acceptance of the application and its publication for opposition.

The USPTO also allows applications for trademark registration based on an applicant's bona fide intent to use the mark in commerce. Prosecution of those applications is generally similar to use-based applications, except the applicant need not file a statement of use until it begins actually using the mark in commerce. If the statement of use is not filed and accepted before the examiner approves the mark for publication, the USPTO will issue a notice of allowance after the opposition period closes. The applicant then has six months to file a declaration of use and proof of use, or a request for an extension of time to make such a filing. Applicants may seek up to five six-month extensions of time to file statements of use.

The fees associated with filing a new trademark application are US$350 per class using the regular Trademark Electronic Application System (TEAS) form and US$250 using the TEAS Plus form (in which the applicant selects the goods and services listing from existing entries in the USPTO Trademark Identification Manual). The USPTO does not accept paper trademark filings. The USPTO requires that all foreign-domiciled trademark applicants be represented by an attorney who is licensed to practise law in the United States.

Domain names may pose registrability and other trademark issues. The Anti-Cybersquatting Consumer Protection Act 1999 (15 USC Section 1125(d)) addresses cybersquatting by creating a private cause of action by a trademark owner against a domain name registrant who has a bad faith intention to profit from the mark. It is also possible to bring an in rem action against domain names that consist essentially of counterfeits of marks. From a trademark perspective, domain names are like other trade names in that they can be protectable as trademarks to the extent they are used as trademarks – rather than a mere URL being used as a unique identifier of a web address. The US Supreme Court has held that adding a top-level domain identifier such as '.com' to an otherwise generic term is capable of having source-identifying significance and therefore eligible for trademark protection. That is, even though generic terms are incapable of designating source and cannot be trademarks, '[generic term].com' is capable of functioning as a trademark and is registrable if no other grounds for refusal exist.

Social media handles (e.g., @username) and hashtags (#) follow the same pattern as trade names and domain names: they are only protectable as trademarks to the extent they are used as trademarks. That is, if the social media username or hashtag is being used in commerce to identify the source of a good or service, the owner may claim trademark rights in it. But unlike the addition of a top-level domain identifier, adding internet-based symbology such as the @ or # signs does not render an otherwise unregistrable term potentially registrable.

There is an infinite range of words, phrases, designs, symbols and trade dress that are inherently registrable. The core requirement is that the mark function as an identifier of source for the goods or services with which it is used.

An applied-for mark is not inherently registrable if, in relation to the goods or services identified in the application, it is merely descriptive, primarily a surname, primarily geographically descriptive or fails to function as a source identifier by virtue of being ornamental, informational, generic or functional in the context in which it is used. Consequently, what is registrable as to one set of goods or services may not be registrable for another.

Marks that are merely descriptive may be registered on the basis of secondary meaning. Owners of such trademarks may submit evidence of advertising expenditures, extensive use of the mark in commerce or other indicators of high consumer recognition of the mark to buttress their arguments that they have acquired distinctiveness. Five years' continuous, commercially significant and substantially exclusive use creates a presumption of acquired distinctiveness.

Prior trademark rights may also provide a basis for precluding registration or cancelling a registration.

Prior use of a trademark, even at common law and limited to a geographic market, provides grounds for opposing an application or cancelling a registration if the junior (that is, later in time) user's trademark is confusingly similar to the senior user's mark in connection with the same or related goods or services.

However, trademark rights are not necessarily perpetual: they can be extinguished. If this occurs, the senior user may not rely on prior rights to challenge the registration of a junior user's mark. This can occur in several ways, the most common of which are:

1. abandonment, with non-use for three consecutive years giving rise to a presumption of abandonment;
2. naked licensing, so that the mark no longer functions to identify the senior user as the source of the goods or services; and
3. assignment in gross, where the mark is separated from the commercial goodwill associated with it and no longer functions as the owner's source identifier.

Abandonment is the primary means by which trademark rights expire, because it is the natural end point to cessation of use of the mark in commerce. Once a mark has been legally abandoned, subsequent use cannot retroactively cure the abandonment or resuscitate the senior user's rights. Instead, new trademark rights arise starting on the date of the resumed use.

Inter partes proceedings in the USPTO proceed before the TTAB. The TTAB generally follows the Federal Rules of Civil Procedure and the Federal Rules of Evidence with some exceptions. The TTAB has codified its rules in the Trademark Trial and Appeal Board Manual of Procedure (TBMP). Because TTAB proceedings are limited only to questions of trademark registrability, the TTAB's rules are designed to follow a speedy and efficient timeline and provide for almost entirely on-paper proceedings in lieu of the live testimony or argument available in court.

Oppositions and cancellations are the most common inter partes proceedings. The party challenging the other's trademark rights takes the role of the plaintiff, and the party seeking to maintain its trademark rights takes the role of the defendant. Other than the terminology used, the proceedings largely mirror litigation in federal or state court: the plaintiff must establish standing to bring the proceeding, establish grounds for opposition or cancellation of the registration and initiate the proceeding timely.

The TTAB also hears concurrent use registration proceedings, also known as concurrent use proceedings. In such proceedings, the TTAB adjudicates whether one or more applicants to otherwise confusingly similar marks are entitled to a concurrent registration. A concurrent registration is a restricted registration that has conditions and limitations fixed by the TTAB, such as a restriction of rights to a limited geographical market such that it will not give rise to a likelihood of confusion with marks in other geographical markets.

From 18 December 2021, the TTAB began a new process of hearing ex parte expungement and re-examination proceedings for cancellation of a registration when the required use in commerce has not occurred.

TTAB decisions are appealable, and appeals are heard in the Court of Appeals for the Federal Circuit or a US federal district court.

Appeals taken to the Federal Circuit are decided only on the record established before the TTAB. The Federal Circuit does not hear new evidence or consider new claims.

Conversely, appeals taken to a US district court allow for both new evidence and the opportunity for the parties to raise new claims. For example, following an inter partes cancellation proceeding, an appellant to a district court could add a claim for trademark infringement and introduce new survey or expert evidence to support such a claim.