Registration and use

Ownership of marks

Who may apply for registration?

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

Scope of trademark

What may and may not be protected and registered as a trademark?

Subject to certain exceptions, any distinctive and non-functional word, symbol, drawing or combination thereof may be registered in the US Patent and Trademark Office (USPTO) or protected under the common law without a registration. In addition, certain product shapes, packaging, slogans, colours, sounds, fragrances, flavours and other non-visual matter can be registered or protected.

Unregistered trademarks

Can trademark rights be established without registration?

Yes. An unregistered but otherwise valid trademark (also known as a common-law trademark) is protectable under section 43 of the Lanham Act (15 USC section 1125). However, unregistered trademark rights ordinarily are geographically limited to the region in which the trademark is used or is known to consumers. Unlike a registered trademark, an unregistered trademark is not presumptively valid. To protect an unregistered trademark, the rights holder must prove that it owns a valid trademark.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

A famous mark enjoys broader protection than one that is not. However, US law generally does not protect either famous and well-known marks (as that phrase is used in the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks) or marks not used within the United States.

The benefits of registration

What are the benefits of registration?

Registration is evidence of the registered mark’s validity and nationwide priority of rights dating to the filing date. 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 (especially those against counterfeiting) not otherwise available; and
  • use the US registration as basis for applications abroad.
Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

Each application requires the following:

  • applicant’s name, address, entity type and email address;
  • the applicant’s signature or verification;
  • identification of the goods or services;
  • the filing basis;
  • a drawing of the mark;
  • a description of the mark; and
  • payment of the filing fee.

 

If the applicant files based on use in commerce, the application also must include:

  • a verified statement of the mark’s use in commerce;
  • the date of first use;
  • the date of first use in commerce; and
  • specimens showing use of the mark for at least one good or service in each class. Specimens showing a mark’s use on a website must include the URL and the access or print date.

 

Subject to very limited exceptions, all applications must be filed electronically.

If the applicant files based on a bona fide intent to use the mark in US commerce, the application must include a verified statement to this effect. Applications claiming foreign filing priority under the Paris Convention must identify the home country application or registration and verify the applicant’s bona fide intent to use the mark in US commerce. Registration sought through the Madrid Protocol must meet the requirements set out by the WIPO, including submission of Form MM 18 (Declaration of Intent to Use the Mark: United States of America), and a verified statement confirming the applicant’s bona fide intention to use the mark in US commerce.

Applicants need not undertake searches prior to filing.

Applicants domiciled outside the US must retain US counsel to prosecute their applications. An applicant lacking US counsel has six months to retain one. Although the application will retain its filing date, the USPTO will not process it until the applicant has identified a licensed US attorney.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

If no substantive issues arise during examination, a registration can issue within nine months of the application’s filing date.

A Trademark Electronic Application System (TEAS) Reduced Fee filing costs US$275 per class and requires the applicant to:

  • receive solely email correspondence from the USPTO; and
  • file certain required submissions electronically.

 

A TEAS Plus filing costs US$225 per class and requires the applicant to:

  • file a complete application;
  • use approved USPTO Identification Manual language for the description of goods and services;
  • pay fees for all classes at the time of submission;
  • file electronically; and
  • receive email communications only.

 

These fees are subject to amendment by the USPTO, which can increase (or decrease) the fees at its sole discretion.

The USPTO no longer accepts paper applications.

A trademark registration takes effect upon issuance; however, upon registration, most of the rights provided by registration will date back to the filing date of the application.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The USPTO follows the International Classification System.

Multi-class applications are available. There is no reduction in USPTO fees for filing a multi-class application.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

A USPTO examining attorney will review the application for completeness and compliance with registrability requirements, as well as for potential conflicts with other registered or pending trademarks. The USPTO will consider a consent agreement between the parties, but the agreement must explain why confusion is unlikely and the steps the parties will take should confusion occur. A mere letter of consent is insufficient.

The examining attorney may issue an office action with a six-month response deadline. The applicant may respond to and resolve any objections. If the objection is relatively minor, the examining attorney may contact the applicant (or its counsel) by telephone or email.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

The US belongs to the Paris Convention, and section 44 of the Lanham Act allows the registration of marks that have been applied for or registered in a convention member’s country of origin. Generally, ownership of a foreign trademark registration cannot overcome the refusal of an application or support an enforcement action against an infringing use in the US.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

All mark owners may use the ™ symbol to reflect a claim of trademark rights, regardless of whether their marks are registered.

The ® symbol should be used only with marks covered by registrations (and not applications).

Marking is not mandatory but is strongly recommended to provide notice of rights and to ensure proper trademark use to avoid jeopardising rights in the mark. A federal registrant’s failure to use the ® symbol may reduce the monetary relief available in an action to protect the registered mark.

Appealing a denied application

Is there an appeal process if the application is denied?

Yes. Unsuccessful applicants may appeal to the Trademark Trial and Appeal Board (TTAB) by filing a notice of appeal and paying the requisite fee within six months of the date of final rejection. Notices of appeal must be filed through the Electronic System for Trademark Trials and Appeals. The applicant must file an appeal brief within 60 days of the date of the appeal. The examining attorney will then have an opportunity to respond, and the applicant can then file a reply brief. An applicant dissatisfied with the TTAB’s decision can appeal to the US Court of Appeals for the Federal Circuit or to the US District Court for the Eastern District of Virginia.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Yes. US law allows 'any person who believes it is or will be damaged by registration of a mark' to oppose an application. The only requirement is the allegation of facts showing a real interest in the proceeding’s outcome.

Opposition grounds include:

  • non-compliance with registrability requirements; and
  • likely dilution of the distinctiveness of the plaintiff’s famous mark.

 

On publication, would-be opposers have 30 days to oppose or request an extension of time to do so. The deadline can be extended for up to 90 days without the applicant’s consent and an additional 60 days with consent. Oppositions are governed by the Lanham Act, the Trademark Rules (Parts 2 and 7 Title 37 of the Code of Federal Regulations) and the TTAB Manual of Procedure.

The Trademark Rules outline a time frame for the discovery period, testimony periods and briefing schedules. The standard schedule sets a final briefing deadline 550 days after the notice of opposition. The TTAB usually issues a decision within eight months of submission of the briefs. The parties can agree to an accelerated case resolution schedule.

The losing party in an opposition can appeal to the US Court of Appeals for the Federal Circuit or a federal district court with jurisdiction over the parties. Appeals to the Federal Circuit are governed by the Federal Circuit Rules, while appeals to a federal district court are governed by the Federal Rules of Civil Procedure. The TTAB Manual of Procedure sets out the notice requirements and deadlines for filing an appeal. Parties generally have 60 days from a decision in which to appeal. If a party appeals to the Federal Circuit, the non-filing party has 20 days to elect to have the decision reviewed by civil action.

A registration can be cancelled for abandonment at any time. The challenger must show that use of the registered mark has been discontinued with an intent not to resume use. Non-use for three consecutive years constitutes prima facie evidence of abandonment. The procedure for cancellation for abandonment is identical to the procedure for cancellation on other grounds.

If the registration has not passed its fifth anniversary, it can be cancelled:

  • for any reason that would have prevented its issuance in the first place; or
  • because the continued registration of the mark is likely to dilute the distinctiveness of a prior user’s famous mark.

 

If the registration has passed its fifth anniversary, the grounds for cancellation are narrowed to the following:

  • the registration was procured or maintained through fraud;
  • the registered mark:
    • has become generic;
    • is functional; or
    • has been abandoned (non-use);
  • as of the registration date, the registered mark:
    • was deceptive;
    • falsely suggested a connection with a person, institution, belief or national symbol;
    • comprised the flag, coat of arms or other insignia of the United States, any state or municipality or any foreign nation; or
    • comprised a name, portrait or signature identifying a particular living individual (unless with consent) or the name, signature or portrait of a deceased US President during the life of their widow or widower (unless with written consent);
  • the registered mark has been used to misrepresent the source of the goods or services with which it is used; or
  • if a certification mark, the registered mark has been used as a trademark or service mark.

 

Any person who believes they will be damaged by a trademark registration may file a cancellation action.

A cancellation action is commenced by filing a petition for cancellation and the required fee with the TTAB. The petition must be filed electronically and signed (but not verified) by the petitioner or the petitioner’s attorney.

A petition must include:

  • a short and plain statement of the reasons why the petitioner believes it is or will be damaged by the registration; and
  • the grounds for cancellation.

 

The petition need only give fair notice of the basis for each claim and should not be accompanied by evidence. However, fraud as a ground for cancellation must be pleaded with particularity.

The TTAB will serve the registrant with the petition and set deadlines for the registrant’s answer, discovery, initial and expert disclosures, and trial.

A final TTAB decision may be appealed to the US Court of Appeals for the Federal Circuit or a federal district court with jurisdiction over the parties. Appeals to the Federal Circuit are governed by the Federal Circuit Rules, while appeals to a federal district court are governed by the Federal Rules of Civil Procedure. The notice requirements and deadlines for filing an appeal are contained in the TTAB Manual of Procedure. Parties generally have 60 days from the date of the decision in which to appeal. If a party appeals to the Federal Circuit, the non-filing party has 20 days to elect to have the decision reviewed by civil action.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A trademark registration can be maintained indefinitely if the owner submits proper maintenance and renewal documents. The owner must file both a statement of use and a specimen showing current use of the mark in US commerce between the fifth and sixth anniversaries of the registration date. It may renew the registration before the 10th anniversary of the registration date and every 10 years thereafter, provided it files a statement of use and specimen showing the mark’s current use in commerce.

Surrender

What is the procedure for surrendering a trademark registration?

A registration may be surrendered for cancellation electronically and without a filing fee. Unless the registration is the subject of a cancellation proceeding before the TTAB, a request for surrender is handled by the Post-Registration Division of the USPTO. If the surrendered registration is the subject of a cancellation proceeding, the TTAB will process the surrender.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright or designs)?

Yes. Under certain circumstances, copyright law may protect designs, words and sounds used as trademarks. Trademark law protects marks used with goods or services; copyright law protects original works of authorship fixed in a tangible medium. While a single word can be a protectable trademark, it is unlikely protectable under copyright law. A slogan or sentence may be protected under both copyright and trademark law. A musical composition also may be protected under both copyright and trademark law if used in connection with goods or services, although trademark law would not apply if the product associated with the composition is the composition itself.

A mark owner can secure trade dress protection for the appearance of a product, its packaging or its overall appearance. A product feature claimed as trade dress may be protected only if it is non-functional.

A mark qualifying for trade dress protection also may receive protection under a design patent if it is a novel and ornamental design. Design patents protect the non-functional, non-obvious, ornamental features of a product or container. Under some circumstances, a design patent may protect a design against imitation even if confusion is unlikely because of the parties’ labelling.

Publicity rights also may be available in specific instances. An individual whose likeness is used in association with goods and services and has acquired distinctiveness may be protected under persona-based causes of action.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

The Anti-cybersquatting Consumer Protection Act (15 USC section 1125(d)) protects against the misappropriation of marks in domain names. It provides a federal cause of action against a person who:

  • has a bad-faith intent to profit from another party’s trademark; and
  • registers, traffics in or uses a domain name identical or confusingly similar to that trademark (or, in the case of a famous trademark, likely to dilute the distinctiveness of that mark).

 

The statute precludes liability if the registrant had reasonable grounds for believing the use was a fair use or otherwise lawful. Remedies include the forfeiture or cancellation of the domain name or the transfer of the domain name to the mark’s owner.

Law stated date

Correct on

Give the date on which the information above is accurate.

7 August 2020.