At a glance: trademark registration and use in USA

Registration and use

Who may apply for registration?

Any natural person or entity using a mark or with a bona fide intent to use it may apply to register it.

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 at the US Patent and Trademark Office (USPTO) as a trademark, service mark, certification mark or collective membership mark; they also can be protected under common law without a registration. In addition to word marks, certain product shapes, packaging, slogans, colours, sounds, fragrances, flavours and other non-visual matter can be registered or protected.

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(a) of the Lanham Act (15 USC section 1125(a)). However, unregistered rights are ordinarily 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.

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, but US law generally does not protect either famous or well-known marks (as defined in the World Intellectual Property Organization (WIPO) Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks) or marks not used within the United States.

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. Federal registrants may:

• use the ® symbol;
• protect their marks in federal court;
• obtain certain remedies (especially those against counterfeiting) that are not otherwise available; and
• use the US registration as a basis for applications abroad.

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?

All applications must be filed electronically; the USPTO no longer accepts paper applications. Applicants need not undertake searches prior to filing.

Each application requires the following:

• the applicant’s name, address, entity type and email address;
• the applicant’s signature or verification;
• an 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 in US commerce 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.

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 domiciled outside the United States must retain US counsel to prosecute their applications. An applicant lacking US counsel must 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.

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.

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.

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.

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 marks covered by registrations or pending applications. 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 non-extendable 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.

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 United States 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 instance of infringing use in the United States.

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 or covered by pending applications.

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.

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 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 on the existing record or to the US District Court for the Eastern District of Virginia if it wishes to supplement the record.

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. Section 13(a) of the Lanham Act (15 USC section 1063(a)) allows any party that believes it will be damaged by a mark’s registration to oppose an application to register the mark. 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.  Subject to the payment of filing fees, 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 define 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 likely dilutes 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 at 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 his or her surviving spouse (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 party that believes it will be damaged by a mark’s 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. It 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.

In addition to cancellation actions, US law authorises two ex parte procedures for challenging registrations based on the non-use of the registered marks. The first – ex parte re-examination – permits challenges to use-based registrations whose owners averred during the application process that their marks were used in commerce. This mechanism allows the USPTO to re-examine the accuracy of the registrant’s averment of use as at the filing date of that averment. It is unavailable once a targeted registration has passed its fifth anniversary.

The second – ex parte expungement – allows challenges to the registration of marks that have never been used in commerce. It primarily targets registrations based on non-US registrations. It generally is available to challengers only between the third and the 10th anniversaries of a registration’s issuance. However, for a limited period of time until 27 December 2024, petitions to initiate expungements may be brought against registrations at any time after the registrations’ third anniversaries.

Standing is not required to initiate ex parte proceedings. Instead, another party can anonymously petition the director of the USPTO to initiate either type of proceeding by submitting evidence or testimony establishing a prima facie case of non-use of a mark in commerce as at the relevant date, namely:

• the date on which an averment of use is filed in support of a use-based application; and
• the third anniversary of a registration based on a non-US registration.

Alternatively, the director of the USPTO may determine on his or her own initiative that a prima facie case of non-use exists.

Once a prima facie case of non-use is established, the registrant may rebut that case by submitting evidence and testimony to the contrary. Owners of registrations based on non-US registrations can demonstrate excusable non-use. If the director of the USPTO deems the registrant’s responsive showing inadequate, the goods or services in connection with which use in commerce did not exist as at the relevant date will be stricken from the registration, subject to the applicant’s right to appeal to the TTAB. If the director of the USPTO finds the responsive showing adequate, however, that determination will have a preclusive effect barring all further ex parte challenges to the registration with respect to the goods or services targeted in the first challenge.

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 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.

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 that it files a statement of use and specimen showing the mark’s current use in commerce.

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.

Can trademarks be protected under other IP rights?

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 to be 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 does 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 and 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.

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 party who:

• has a bad-faith intent to profit from another party’s trademark; and
• registers, traffics 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 domain name 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.