Legal framework

US trademark law is governed by a federal statute known as the Lanham Act, as well as state law. The Lanham Act governs enforcement of trademarks, service marks and unfair competition, and provides authority to the US Patent and Trademark Office (USPTO) to register marks used in interstate or foreign commerce. In addition to the Lanham Act, each state has its own trademark laws that provide for protection and enforcement of marks used within that state. The Lanham Act and state laws coexist and courts will apply one or both sets of laws, as appropriate.

The United States is a signatory to many international treaties, including:

  • the Madrid Protocol;
  • the Paris Convention;
  • the North American Free Trade Agreement;
  • the General Agreement on Tariffs and Trade;
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights; and
  • the Singapore Treaty.

Unregistered marks

In the United States, trademark rights are acquired upon use of a mark in commerce, often referred to as common law trademark rights. As a general rule, registration is not needed to obtain trademark rights or to enforce a trademark in the United States. Instead, the first entity to use a distinctive mark in commerce may claim rights to that mark for the goods or services with which the mark is used. The owner of an unregistered mark may not use the ‘®’ symbol, as it may be used only on or in connection with a registered mark; however, the owner of an unregistered mark may use the ‘™’ symbol to put others on notice that it claims rights to a mark.

One exception to this general rule is that a party may obtain priority over another party that uses a mark first in commerce (without filing an application) if the first party filed an intent-to-use federal trademark application with the USPTO, as priority of use dates back to the date of filing of the application. A second exception is that where two parties use marks that are not inherently distinctive, the first to acquire secondary meaning in the mark will acquire priority. Secondary meaning of a non-distinctive mark occurs when consumers recognise the mark as an indicator of source.

Use to acquire rights

There is no set threshold of use required to establish rights to an unregistered mark. Rather, the mark must be used in good faith in the ordinary course of business.

Registered marks

A ‘trademark’ is any word, symbol, design, colour or sound that is capable of distinguishing the goods or services of one undertaking from those of another. To be registrable, trademarks must be inherently distinctive or have acquired secondary meaning. A federal trademark registration may be obtained for any mark used in either interstate commerce or foreign commerce that affects US commerce.

The following cannot be federally registered:

  • immoral or scandalous matter;
  • deceptive matter;
  • matter that may disparage, falsely suggest a connection or bring contempt or disrepute;
  • any flag, coat of arms or other insignia of the United States, any state or municipality or foreign nation;
  • matter protected by statute or convention (eg, the Red Cross or the Olympics);
  • the name, portrait or signature of a living individual or deceased US president, without consent;
  • generic, merely descriptive or deceptively misdescriptive terms;
  • geographically descriptive or misdescriptive terms; and
  • names that are primarily merely surnames.

Types of federal registration

Two types of federal trademark registration are available in the United States:

  • registration on the Principal Register, which is for marks that are inherently distinctive or have acquired distinctiveness; and
  • registration on the Supplemental Register, which is for marks that are not inherently distinctive (ie, descriptive marks), but are capable of acquiring distinctiveness through use over time and that otherwise meet the requirements for registration on the Principal Register.

Benefits of federal registration

Registration on the Principal Register:

  • satisfies the burden of proof that the registrant owns the mark, that the mark is valid and that the registrant owns the exclusive right to use the registered mark in commerce for the goods or services specified in the registration;
  • serves as constructive notice of the registrant’s ownership and use of the mark;
  • eliminates certain defences to claims of infringement and dilution;
  • can be relied on to prevent the import of infringing goods;
  • may be cited against applications for registration of confusingly similar marks; and
  • entitles the registrant to use the ‘®’ designation.

Registration on the Supplemental Register:

  • may be cited against applications for registration of confusingly similar marks; and
  • entitles the registrant to use the ‘®’ designation.

Eligible applicants and owners

Any individual, entity, state, nation or other government body may file an application for any trademark that it owns, meaning that it applies or will apply the mark to the goods or services included in the application, either directly or through a licensee.

Power of attorney

A power of attorney is not needed to file a new trademark application. A revocation and new power of attorney will be needed for subsequent filings if a new attorney is taking over a filing and the applicant or registrant was previously represented by a different attorney of record. A power of attorney need not be notarised or legalised.

Procedures

Examination

Within approximately three to four months of filing, the application is assigned to a USPTO examining attorney for review to confirm that all requirements for registration are met. The examining attorney will review the application to determine, among other things, whether:

  • there is a likelihood of confusion with any prior applied-for or registered marks;
  • the applied-for mark is merely descriptive of the applied-for goods or services;
  • the identification of goods or services requires modification;
  • a new or substitute specimen is required; or
  • a foreign registration certificate needs to be submitted.

If the examining attorney determines that there are no issues with the application, he or she will approve the application for publication in the Trademark Official Gazette. Third parties then have 30 days to oppose the application or file for an extension of time to oppose.

If the examining attorney determines that there is an issue with the application, he or she will issue an office action identifying each issue. The applicant must respond within six months; if no response is received within this timeframe, the application will be deemed abandoned. If the office action response resolves all of the issues, the application will proceed to publication as described above. If the office action response does not resolve all of the issues, the examining attorney will issue further office actions and the applicant will have six months to respond to each. If a final office action issues, the applicant will have six months to file a request for reconsideration or file an appeal with the Trademark Trial and Appeal Board (TTAB).

Opposition

An opposition can be filed within 30 days of the application’s publication in the Trademark Official Gazette. This timeframe is extendable for up to 180 days after publication with consent, good cause or extraordinary circumstances. Specifically, the initial extension request can be filed for 30 days, for any reason, or 90 days for good cause. After this initial extension, the potential opposer can seek an additional 60 or 90-day extension, depending on the initial extension, with the applicant’s consent or by showing extraordinary circumstances.

Before the opposition period expires, the potential opponent must file a notice of opposition with the TTAB. The grounds for opposition include:

  • likelihood of confusion;
  • dilution;
  • fraud;
  • abandonment of the mark; and
  • mere descriptiveness.

The TTAB then sends the notice of opposition to the applicant, setting the deadline for response as well as the other dates for discovery and trial. However, once these deadlines are set, they are extendable by filing a motion to extend or suspend the proceedings.

As with civil litigation, parties before the TTAB are entitled to request discovery and take depositions. However, no trial occurs; instead, the proceedings are conducted on paper. A hearing may occur in some circumstances. At the end of the proceedings, the TTAB will determine whether the mark is eligible for registration.

If either party receives an unfavourable decision, it can be appealed to the US Court of Appeals for the Federal Circuit or a de novo review can be sought in a US federal district court.

Registration

If no opposition is filed or the opposition is unsuccessful, a registration certificate will issue for an application filed based on use or a foreign registration. Alternatively, a notice of allowance will issue for an application filed based on intent to use. For intent to use applications, the applicant has six months from the date of the notice of allowance to file a statement of use or seek an extension of time to file a statement of use. The applicant can obtain five extensions of time for a total of 36 months from the notice of allowance date to demonstrate use. Once a statement of use is filed and accepted, the USPTO will issue a registration certificate.

Removal from register

After the registration certificate issues, the registrant must file maintenance documents with the USPTO. Except for registrations filed based on the Madrid Protocol, the registrant must file a declaration of use confirming that the mark is in use in commerce (or there is excusable non-use) between the fifth and sixth year after registration. At this time, the registrant can also simultaneously file a declaration of incontestability. For all registrations, the registrant must file a declaration of use and a renewal every 10 years after registration. Each of these maintenance documents allows for a six-month grace period for filing, which requires payment of an additional fee. If these maintenance documents are not filed, the registration will be cancelled.

A registration can also be cancelled through a cancellation action filed by a third party with the TTAB. A cancellation action can be filed based on absolute grounds (eg, the mark is descriptive, deceptive, generic or functional), relative grounds (eg, there is an earlier application or registration, dilution or bad faith) or non-use grounds. There is no deadline for filing a cancellation action on relative and non-use grounds. However, a cancellation action based on absolute grounds generally must be filed within five years of the registration date. For a non-use cancellation action, there is a presumption of abandonment if the mark has not been used for three or more years from the registration date.

A registration can also be voluntarily surrendered for cancellation.

Searches

The USPTO does not conduct official searches before the filing of the application; however, any person can search the USPTO’s website for prior filed applications and registrations for free. These searches provide results for live and dead applications and registrations. Marks can be searched by simply searching for the word mark, serial or registration number or owner. Such a search will provide results in all classes and will include word marks as well as design marks. More structured searches can also be conducted to search for design codes, goods and services, classes, attorney of record and filing dates, among other parameters.

Third-party commercial search companies can also provide more comprehensive searches that include searches of the USPTO register as well as common law, domain names, business names and web searches for varying fees.

Enforcement

Trademark enforcement actions can be complex, costly and time consuming. As a result, before initiating civil actions, trademark owners generally enforce their marks and try to resolve matters directly with the accused infringer. If a resolution is not reached, a civil action may be filed in a federal court which has jurisdiction over the accused party and where the venue is proper. Many different causes of action may be asserted by a trademark owner in a civil action (eg, trademark infringement, trademark dilution and unfair competition, where appropriate).

Upon a finding of infringement, a court may grant monetary and injunctive relief to a trademark owner. In the case of monetary damages, a trademark owner may argue that it is entitled to actual damages or lost profits; and in instances of wilful infringement, a trademark owner may try to obtain profits earned by the accused infringer. Additionally, if an accused infringer is found to have wilfully infringed a patent, the court is permitted to increase the damages award up to threefold and may also require the infringer to pay the trademark owner’s attorneys’ fees.

Ownership changes and rights transfers

Trademarks may be assigned or licensed. In the United States, for an assignment of a trademark application or registration to be valid, it must be in writing and the assignment must include the goodwill of the business in which the mark is used. ‘Goodwill’ is defined as “the desirability of the goods or services which are identified by the trademark or service mark”.

There are no restrictions on a registrant’s ability to assign a trademark registration. However, there is a restriction on an applicant’s ability to assign a trademark application filed on an intent to use basis. In the United States, an applicant is not permitted to assign an intent to use application for a mark that is not in use, unless the applicant is assigning the mark to a successor to the business of the applicant. If the applicant is not assigning the mark to a successor to the business and the mark is in use, the applicant may file an amendment to allege use or statement of use and may then assign the mark as it would a registered mark.

The assignment should be recorded with the USPTO by recording a copy of the assignment document or a short form of such assignment. The assignment document, together with the required recordation form cover sheet, may be filed electronically or in paper form with the USPTO and no legalisation is required for this filing.

Use of a licensed mark by a licensee inures to the benefit of the trademark owner, provided that the trademark owner supervises the nature and quality of the goods or services bearing the trademark. Licensing without such supervision or quality control results in what is known as a ‘naked licence’ and can result in the loss of trademark rights.

Related rights

There are areas of overlap in the United States between trademark rights and other rights. For example, a trademark is eligible for copyright protection if it is an original work that is in a tangible medium of expression. Such copyright protection can extend only to trademarks that are, for example, designs or logos and that are otherwise copyrightable (phrases, names and titles cannot be copyrighted).

Similarly, under state law, a trademark that, for example, is someone’s name or includes an image of the person’s likeness can be protected under the right of publicity.

Trademark rights can also be asserted under state law and causes of action can be brought under state law for dilution or under state unfair competition law.

Online issues

An owner’s rights in registered and unregistered trademarks apply online and an owner can make, for example, claims of trademark infringement or dilution based on unauthorised online use. There is no national alternative dispute resolution policy for local country-code top-level domains; however, Uniform Domain Name Dispute Resolution Policy procedures are available.

This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.

Fitzpatrick, Cella, Harper & Scinto

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United States

Tel +1 212 218 2100

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Jessica Hiney

Counsel

jhiney@fchs.com

Jessica Hiney practises in all aspects of trademark law, including domestic and international trademark portfolio management. She routinely counsels clients on US and global trademark clearance, protection and enforcement strategies, including opposition and cancellation proceedings, and assists with preparing and responding to cease and desist letters.

Ms Hiney also advises on copyright matters, including filing applications and analysing licence agreements. She has handled Uniform Domain Name Dispute Resolution Policy proceedings before the National Arbitration Forum and has advised on IP diligence matters.

Ms Hiney has extensive experience with IP litigation involving the computer, electrical, mechanical and pharmaceutical arts, including computer hardware and software, e-commerce and trading systems, injection moulding systems, ophthalmic lens manufacturing processes, laser printing and hormone replacement therapy.

Lisa M Mottes

Associate

lmottes@fchs.com

Lisa Mottes focuses her practice on trademark prosecution and client counselling as well as patent litigation. She has experience in many aspects of trademark law, including trademark clearance and prosecution, as well as with inter partes proceedings before the Trademark Trial and Appeal Board and preparing cease and desist letters. Her patent litigation practice focuses on the pharmaceutical and chemical arts.

While in law school, Ms Mottes was an articles editor of the Seton Hall Law Review.