Module 4 - How to Obtain and Protect Your IPRs in the United States
Lesson 3: Trademarks
Reading time ~19 minutes
As with copyrights, protection of trademarks in the United States does not depend upon registration. However, trademark registration provides significant benefits for the trademark owner and is strongly recommended as a vital step in strong international enforcement. On the next several screens, you will learn about the benefits of trademark registration and the procedures for securing a registration.
Full Trademark Searches
Professional search firms, which have expertise in conducting trademark searches, are used to conduct full trademark searches. Such firms have access to proprietary databases and other sources of trademarks that are registered and/or in use.
The full search is designed to identify possible conflicts with federally registered marks and pending applications, state registrations, common law marks, and domain names. The results of a full search generally are reviewed and evaluated by a trademark attorney.
Before selecting a trademark, you should conduct searches to determine whether a proposed mark is available for use. There is no guarantee, however, that searches will identify all possible conflicts. The exercise is one of assessing the level of business risk associated with adopting any particular mark and choosing a mark that has minimal risk. U.S. businesses or individuals seeking to conduct trademark searches should contact an experienced trademark attorney to assist with this process.
A preliminary search of proposed word and design marks may be conducted in the U.S. Patent and Trademark Office's (USPTO's) Trademark Electronic Search System (TESS). This database contains federally registered marks and pending applications for Federal trademark registration. As the United States is a first to use country, you also may wish to search the Web to see whether there is any evidence that a proposed mark is already in use. Be aware, however, that these preliminary searches should not be relied upon as determinative of a mark's availability. Rather, if preliminary searches show no likely conflicts, a "full" search should be conducted.
Nationwide Ownership of Trademark
A trademark owner must use his or her mark in a particular territory in order to have trademark protection under common law. By securing a Federal trademark registration, however, the trademark owner obtains a presumption of exclusive trademark ownership nationwide, even in areas where he or she has not yet used the mark. Nationwide priority is frequently cited as the most important benefit of trademark registration because it eliminates the risk of others establishing rights in the same trademark before the business has been able to expand its use of the mark nationwide.
The following example illustrates the benefits of nationwide priority afforded by federal trademark registration:
Sally Jones has dreams of owning a nationwide chain of old-fashioned malt shops. She begins with one malt shop in Small Town, Wisconsin, that she calls "Memory Lane Malts." She does not secure a trademark registration for the mark "Memory Lane Malts." One year later, Debbie Dover opens an old-fashioned ice cream parlor called "Memory Lane Sweets" in Topeka, Kansas. Debbie is not aware of Sally's "Memory Lane Malts" shop. Both Sally and Debbie have success with their businesses, and each opens a few more shops in their respective states. After 5 years, Sally secures financing to expand her malt shops nationwide. She becomes aware of Debbie's ice cream parlors and is very upset. She hires an attorney, who tells her that because she does not have a Federal trademark registration, there is nothing Sally can do to prevent Debbie from using the "Memory Lane Sweets" mark in the places where Debbie already has shops.
So what could Sally have done initially in light of her plans for a nationwide chain? At the outset, Sally could have filed an intent-to-use (ITU) trademark application based upon her good faith intention to use the mark in commerce. Then, had Debbie checked the USPTO database prior to using her "Memory Lane Sweets" mark, she would have seen Sally's application to register "Memory Lane Malts" for related services and likely would have been deterred from using the "Memory Lane Sweets" mark. Had Debbie chosen to use the "Memory Lane Sweets" mark in spite of Sally's trademark application, upon registration of Sally's "Memory Lane Malts" mark, Sally could have sued Debbie to stop her from using the "Memory Lane Sweets" mark.
What can Sally do now? Sally could consider filing an application for Federal registration that, if granted, would limit Debbie's ability to expand geographically beyond the places where Debbie currently has shops.
State Trademark Registration
Each of the 50 states operates a trademark office within the secretary of state's office. Applicants may find obtaining a state trademark registration to be cheaper and less time consuming than a federal trademark registration.
However, the effect and value of state registrations can vary dramatically from state to state. For example, some state registrations grant no rights that you do not already possess under common law without registration. While some state registration laws merely provide that a certificate of state registration as proof of registration in the state, other states may give a registration greater evidentiary effect regarding ownership and/or validity of the trademark.
State registration limits rights to within state’s borders, whereas federal registration protects you in all states. If you will be using your trademark in more than one state, you should consider federal registration.
In the United States, unlike in many other countries, trademark rights are established through use of a trademark in the United States in connection with goods or services. If there is a dispute between two parties regarding a particular trademark, the party who used the mark first will prevail even if the other party obtained a registration for the mark first.
Although trademark registration is not required in the United States, the benefits of registering a mark are significant. A U.S. trademark registration provides:
- Constructive notice to the public of the registrant's claim of ownership of the mark
- A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration
- The ability to bring an action concerning the mark in Federal court
- A basis for obtaining a trademark registration in foreign countries
- The ability to file the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods
- The right to use the registered trademark symbol (®) with the trademark
You may file your trademark application online using the Trademark Electronic Application System (TEAS), which can be found at: http://uspto.gov/teas/index.html.
State trademark registration also offers certain benefits.
Use-Based vs. Intend-to-Use (ITU) Applications
In the United States, most trademark applications are use-based – that is, a trademark has already been used in connection with a product or service. In these situations, a "use-based" application can be filed. A use-based application must include a sworn declaration that the mark is in use in commerce and must list the date of first use of the mark anywhere and the date of first use of the mark in commerce. Use in commerce is defined by the trademark law as placement of the mark on products or services plus interstate or international sale or transportation of the products or services. A properly worded declaration is included in the USPTO standard application form. More information is available online for help in establishing use.
In the United States, it is possible to file an application to register a trademark even before the mark has actually been used. If you have not yet used a trademark but intend to do so in the future, you can file an ITU application to register the mark. An ITU application must include a sworn declaration that you have a bona fide intention to use the mark in commerce. A properly worded declaration is included in the application form provided by the USPTO. Note that if you file based on ITU, you must begin actually using of the mark in commerce before the USPTO will register the mark; that is, after filing an application based on ITU, you must later file another form (an Allegation of Use form or a Statement of Use form) to establish that use in commerce has begun.
The advantage of filing an ITU application can be considerable. Upon registration, the registrant may use the filing date of the application as the constructive use date. This date can be used to defeat those who use the same or a similar mark for related goods or services at a later date. Thus, by filing an ITU application, a business can reserve a mark while it continues to develop its plans for introducing the product or service into the marketplace. However, no registration can be issued until the applicant provides acceptable evidence of use.
Description of Goods and/or Services
Trademarks are used in connection with goods or services. Thus, a trademark application must include a statement identifying the goods and/or services with which the mark is used or will be used. The identification of goods and/or services must be specific enough to identify the nature of the goods and/or services. For examples of acceptable identifications, go to the USPTO Trademark Acceptable Identification of Goods and Services at: http://tess2.uspto.gov/netahtml/tidm.html.
A trademark attorney can help your business by ensuring that the description is accurate and sufficiently broad to maximize protection of the mark.
Specimens Showing Use of the Mark
A use-based trademark application must include a "specimen," which is an actual example of how the mark is being used in connection with the identified goods and/or services. An ITU application does not require a specimen (because the mark has not yet been used), but you would need to file a specimen with the Allegation of Use form or Statement of Use form evidencing use of the mark with the goods or services, which is required before an ITU application can proceed to registration.
For marks used in connection with goods (products), the specimen should show the mark on the actual goods or packaging for the goods. You may submit a tag or label for the goods, a container for the goods, a display associated with the goods, or a photograph of the goods that shows use of the mark on the goods. You should not submit the actual product.
For marks used in connection with services, the specimen should show the mark used in the sale of or advertising for the services. You may submit a sign, a brochure about the services, an advertisement for the services, a business card or stationery showing the mark in connection with the services, or a photograph showing the mark as used in rendering or advertising the services. There must be some reference to the type of services rendered on the specimen (i.e., not just a display of the mark itself). For example, if the mark sought to be registered is "XYZ," a business card that shows only the mark "XYZ" would not be acceptable. A business card that states "XYZ REAL ESTATE" as a specimen of the XYZ mark for real estate services would be acceptable.
Depiction of the Mark (the "Drawing")
Every application must include a clear drawing of the mark you want to register. If you are preparing the drawing page yourself, use white, non-shiny paper that is 8½ inches wide by 11 inches long. The mark can be no larger than 3.5 inches high by 3.5 inches wide. The drawing page should include a heading with the following elements:
- The applicant’s name
- The correspondence address
- A listing of goods and/or services
- Dates of use (if already using the mark in commerce) or the wording "Intent to Use"
The representation of the mark must then appear below the heading in the middle of the page and in the proper format for either a "standard character" drawing or a "stylized or special form" drawing. Once filed, you cannot make a material change to your mark.
To see examples of proper drawing pages, go to: http://www.uspto.gov/web/offices/tac/doc/basic/appcontent.htm#dep.
Paper vs. Online Applications
You may file your trademark application online using the Trademark Electronic Application System (TEAS), which can be found at: http://uspto.gov/teas/index.html. TEAS allows you to fill out an application form and submit it directly to the USPTO over the Internet. If you file online through TEAS, you will receive a summary of the filing by e-mail and your application will be assigned an immediate serial number. Today, almost all new trademark applications are filed directly over the Internet using TEAS.
Filing through TEAS also enables you to lower your filing fee. If you file a paper application, the cost is $375 per class of goods or services. Using TEAS, however, lowers your fee to $325. And if you file using TEAS Plus, in which you agree to accept communications via e-mail during the pendency of your application, you can lower your fee per class to $275. To determine whether to use TEAS or TEAS Plus, go to: http://teasplus.uspto.gov/TeasPlus/.
To file a paper application, send it by regular mail to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Paper forms are not processed as quickly as those submitted electronically, and you should allow at least 2 to 3 weeks to receive a filing receipt for your application.
Trademark Application Fees
Trademark application fees vary depending upon the type of application and the method of filing. You may obtain the current schedule of fees at http://www.uspto.gov/go/fees/index.html.
Trademark applications, like trademark searches, can be complex, and the assistance of experienced trademark counsel is generally advised. If you are considering filing a trademark application without an attorney's assistance, you will want to review the materials on the USPTO Web site (www.uspto.gov) and familiarize yourself with the following aspects of trademark applications:
Office Action
If there are problems with the application, the examining attorney issues an Office Action stating the grounds for initial refusal of the application (e.g., that the mark is confusingly similar to another mark already registered or applied for, or that the mark is not sufficiently distinctive to function as a trademark or that the description of goods or services is unacceptable).Response to Office Action
The applicant has 6 months to respond to the Office Action. In the response, the applicant can either refute the examining attorney's arguments or amend the application. The examining attorney then reviews the applicant’s response and either accepts the response or issues a final refusal to register the mark.
Published for Opposition
If the application is approved, it is published for opposition in a USPTO publication called "The Official Gazette." An opposition may be filed by anyone who believes he or she would be damaged by issuance of the registration. If an opposition is filed, the applicant and the party opposing the registration engage in an administrative proceeding before the USPTO Trademark Trial and Appeal Board (TTAB) to determine whether the registration should be granted.
Allowance of Registration
If there no opposition is filed by a third party, the USPTO issues either a Certificate of Registration or a Notice of Allowance (depending on whether the application is use based or ITU).After a trademark application is filed, it goes through an examination process that can take 18 months or longer to complete. The process consists of the following steps:
Section 8 Affidavit
Between the fifth and sixth year anniversary of the registration of the mark, a Section 8 Affidavit must be filed in order to maintain the registration. The Section 8 Affidavit states that the mark is still in use. A specimen showing current use of the mark must accompany the affidavit when filed with the USPTO. If a Section 8 Affidavit is not filed before the sixth anniversary of the registration date or within the 6-month grace period (late fees apply), the registration is canceled.
If the mark is not in use but the owner believes the registration should not be canceled, then it is necessary to submit the affidavit stating that the mark is not in use along with a statement that there are special circumstances which excuse the nonuse and that the nonuse is not due to any intention to abandon the mark.
Renewal Application
Within a 1-year period prior to the 10th anniversary of the registration date, a renewal application must be filed with the USPTO in order to maintain the registration. The renewal application must include a Section 9 Affidavit stating that the mark is still in use as well as a specimen showing current use of the mark. There is a 6-month grace period after the tenth anniversary during which a renewal application will be accepted upon payment of an additional fee. Each renewal term is 10 years. Failure to renew results in cancellation of the registration.
A Federal trademark registration can last indefinitely if the owner continues to use the mark in connection with the goods and/or services and files all the necessary documentation with the USPTO at the appropriate times. In general, the owner of a registration must file:
- Affidavits of Continued Use or Excusable Nonuse (Section 8 Affidavit) between years 5 and 6 following registration
- A Renewal Application between years 9 and 10 following registration
Forms for filing these documents are available at http://www.uspto.gov/teas/. Failure to file these documents will result in loss of the Federal registration, but not in the loss of the underlying trademark rights, unless the owner fails to maintain those rights in the manner discussed on the following screen.
Continuous Use of the Mark
Trademark rights must be maintained through actual use of the trademark in connection with goods or services. In the United States, nonuse of a trademark for 3 consecutive years is considered to be presumptive evidence that the mark has been abandoned. (This evidence can be overcome by the trademark owner in some cases, but you do not want to be in the position of having to prove that you have not abandoned your trademark).
Consistent and Proper use of the Mark
In addition to ensuring that a mark is used continuously, it is also important to ensure that a mark is used:
- Consistently. The mark must be used in a manner that is consistent with the trademark registration. If a mark is materially changed, a new registration should be secured. For example, suppose a bank establishes trademark rights in the mark CHASE SMARTCARD for a credit card offering cash-back dividends. After a few years, the company's marketing team decides to shorten the mark to CHASECARD. Use of the mark CHASECARD will not preserve rights in the mark CHASE SMARTCARD. If the original mark is registered, a new application to register the new mark CHASECARD should be filed. The same principles apply to logos (such as Nike's "Swoosh" logo). As a logo is updated over time, new registrations must be secured if the changes to the mark are material.
- Properly. The mark must always be used as an adjective, never as a noun or a verb. Using the mark as a noun or a verb, or allowing others to do so, could result in the mark becoming generic. A classic example is the mark XEROX. Over time, consumers began to use the mark as a verb ("I need to xerox some documents"), which required the company to engage in an extensive public relations campaign advising consumers to "photocopy" instead of "xerox" documents. These efforts failed to preserve the mark in Russia, Bulgaria and Romania. One way to help avoid a mark becoming generic is to follow the trademark with the word "brand." For example, Johnson & Johnson changed the lyrics of its Band-Aid television commercial jingle from, "I am stuck on Band-Aids, 'cause Band-Aid's stuck on me" to "I am stuck on Band-Aid brand, 'cause Band-Aid's stuck on me."
- With appropriate trademark notices. As discussed on the following screen, it is not uncommon in the United States to use the symbols TM (trademark) and SM (service mark) in connection with marks that are not registered and the symbol ® in connection with marks that are registered.
Enforcement of Rights in the Mark
Trademark owners must take action against third parties who, without their consent, use a mark that is confusingly similar to their mark. Failure to police infringers can progressively weaken the mark’s strength and may, over time, cause the mark to be declared abandoned.Trademark owners should take affirmative steps to monitor the market for infringing uses of their trademarks. This can be done by periodically searching the Internet for uses of the mark, attending trade fairs, and utilizing trademark monitoring services. Trademark monitoring services can watch for marks being applied for or registered and used in foreign countries as well as in the United States. Also, the USPTO Official Gazette is available at the USPTO website at http://www.uspto.gov/web/trademarks/tmog/.
If an infringing use of a trademark is discovered, the trademark owner should undertake efforts to stop the infringement. Information regarding specific steps a trademark owner can take to address infringement is provided in Module 6.
Proper Licensing Contracts and Oversight
Trademark owners licensing the right to use their mark to third parties (e.g. manufacturers, distributors, etc.) should ensure that the license agreement is in writing. In addition, trademark owners must exercise quality control over the licensee's products and/or services. Failure to exercise proper quality control over licensees' use of an owner's mark also could result in the trademarks being declared abandoned.Centralized Control of the Mark
Each trademark owner, assuming it is composed of corporate entity or more than one person, should designate a specific person to be charged with oversight of trademark matters. That person should work closely with trademark counsel in developing trademark programs, reviewing and making decisions concerning trademark availability searches, determining the breadth of the trademark portfolio, ensuring that the business's marks are properly licensed (and that the business also has permission to use others' marks), addressing problems with the trademark program as they arise, and overseeing actions to enforce trademark rights against third parties.
Because trademark rights in the United States are not dependent upon registration, maintenance of trademark registrations is not the same as maintenance of trademark rights. Trademark rights are maintained through continuous and proper use of the mark and enforcement of rights in the mark. Failure to follow these steps could result in abandonment of trademark rights:
In the United States, businesses sometimes use certain trademark symbols in connection with public display of their marks as a means of alerting the public that rights are claimed in those marks. The proper symbol to use depends upon whether or not the trademark is registered:
- The symbols TM (trademark) and SM (service mark) may be used in connection with any mark to put others on notice of a claim of rights in the mark.
- The symbol ® may be used only in connection with marks that are registered with the USPTO.
Because there is no universal symbol for trademark registration, some businesses operating in more than one country prefer to use a statement describing their rights (e.g., "TRADEMARK is a registered mark of [owner] in the United States and other countries") rather than a trademark symbol so that packaging and marketing materials do not need to be revised for distribution in different countries.
You have now completed the lesson on protecting a trademark in the United States
- If you wish to learn about protecting your trademarks abroad, select Module 5 from the menu on the top left of this screen.
- If you would like to read about protecting patents and trade secrets in the United States, continue with this module.