1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The United States is a common law jurisdiction, so trademark rights derive from use – if a seller uses a mark to identify goods that it sells or services that it renders, and no one else has senior rights to the mark for those goods or services in the seller's trading area, the seller has common law rights in the mark.
The federal trademark statute, called the Lanham Act and codified in Title 15 of the United States Code, provides a regime for registration of trademarks that are used in interstate or US-foreign commerce, as well as remedies for infringement, false designation of origin and dilution. The use in US commerce requirement stems from the fact that the US Constitution provides no authority for Congress to enact a national trademark law – the authority for the Lanham Act is the Commerce Clause in Article 1, Section 8 of the Constitution, which gives Congress the power to regulate commerce among the states and with foreign countries. This requirement of use in commerce makes the US federal trademark system very different from those of other countries and foreign applicants that do not understand this may find their rights lost.
Individual states also have laws providing for state trademark registration and, typically, remedies analogous to those provided by the Lanham Act for trademarks, including those not used in interstate or US-foreign commerce.
1.2 How do trademark rights arise (ie, through use or registration)?
Through use, although federal registration provides expanded protection for trademarks, such as the presumptive nationwide right to use a mark, with priority as of the filing date. See question 1.1.
1.3 What is the statutory or other source of the trademark registration scheme?
See question 1.1.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
Under Section 45 of the Lanham Act (15 USC § 1127), a trademark includes any "word, name, symbol or device, or any combination thereof" used by a party to identify its goods from those manufactured or sold by others and to indicate the source of those goods, even if the source is unknown. Any of those things that identify a seller's services is a service mark and service marks are protected equally with trademarks. In addition to word marks, stylised word marks and design marks (logos), product configurations, colours, sounds and even scents can serve as trademarks.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
See questions 1.1. and 2.1.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
Generic terms, descriptive terms that have not developed ‘secondary meaning' as trademarks (ie, acquired distinctiveness), and functional features are not eligible to function as trademarks.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
In the federal (nationwide) system, the US Patent and Trademark Office (USPTO) controls the registration process. Individual states and US territories have their own trademark offices. The answers in this section discuss only the USPTO's federal registration process. Details on federal trademark examination can be found in the USPTO's Trademark Manual of Examining Procedure (TMEP), which can be found at http://tmep.uspto.gov. The TMEP consists of policies and procedures derived from the trademark rules promulgated by the US Department of Commerce in Title 37 of the Code of Federal Regulations.
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
The USPTO provides a comprehensive schedule of its fees on its website at www.uspto.gov/trademark/trademark-fee-information.
3.3 Does the trademark office use the Nice Classification scheme?
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
The USPTO does not allow class-wide applications. The applicant must identify the specific goods or services for which the mark will be used. Also, in general, the USPTO will not issue a registration unless the applicant submits an affidavit to the effect that it is using the mark for all of the goods and services identified in the application in the ordinary course of trade in bona fide sales in US commerce (ie, interstate or US-foreign commerce).
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
3.7 What types of examinations does the trademark office perform other than relative examination?
In addition to conducting a search for conflicting marks, the USPTO examining attorney will examine the written application, any voluntary amendments or other documents that the applicant files before an initial office action is issued, the drawing (ie, depiction of the mark), any specimen(s) of use of the mark and any foreign registration(s) to determine whether the mark is eligible for the type of registration requested, whether amendment is necessary and whether all required fees have been paid (Trademark Manual of Examining Procedure (TMEP) §704.01).
The examining attorney will perform a substantive examination that considers:
- the ownership of the mark;
- whether the proposed mark functions or will function as a trademark;
- whether the proposed mark is sufficiently distinctive to serve as a trademark (ie, whether it is generic or descriptive, and if it is descriptive, whether it has acquired secondary meaning);
- whether the mark includes descriptive matter that must be disclaimed;
- the effect of the applicant's prior registrations; and
- whether registration is barred by a prior adjudication against the applicant.
More details on the USPTO's substantive examination can be found at TMEP §§1200 et seq.
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
Yes, Section 2 of the Lanham Act (15 USC §1052) provides that the USPTO shall refuse to register a proposed mark if:
- it consists of or comprises the flag, coat of arms or other insignia of the United States, a state or municipality, or a foreign nation (TMEP §1204);
- it is the name, portrait or signature of a particular living individual or deceased US president, without the consent of that individual (TMEP §1206);
- it is geographically descriptive or geographically deceptively misdescriptive (TMEP §1210); or
- it is a surname (TMEP §1211).
In addition, the USPTO will deny registration for:
- certain designations of US government agencies;
- designations for which Congress has granted exclusive rights to certain private corporations and organisations (eg, the Boy Scouts and Girl Scouts); and
- other words or symbols protected by statute (eg, the copyright symbol © , the Red Cross and Red Crescent emblems, and designations associated with the Olympic Games) (TMEP §1205).
Details on these other grounds under which a mark is ineligible for registration can be found in TMEP §§1203-11.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
Yes, by letter of protest (TMEP §1715).
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
Yes – in US commerce (ie, interstate or US-foreign commerce).
3.12 How much time does it typically take from filing an application to the first office action?
About three months.
3.13 How much time does it typically take from filing an application to publication?
If there are no office actions, around six months (although this may vary depending on the USPTO's workload).
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
The applicant can submit a request for reconsideration to the examining attorney under Section 715.03 of the Trademark Manual of Examining Procedure (TMEP). If the request for reconsideration persuades the examining attorney that a refusal or requirement should be withdrawn, the examining attorney may approve the application for publication (TMEP §715.03(a)).
An applicant can also appeal the refusal of registration to the US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) by filing a notice of appeal with the TTAB within six months of the date of issuance of the action from which the appeal is taken (TMEP §1501). A request for reconsideration to the examining attorney does not stay the period for noticing an appeal (TMEP 715.03(c)); as such, an applicant will typically file both a request for reconsideration with the examining attorney and a notice of appeal with the TTAB simultaneously.
The TTAB is a body of administrative law judges empowered to hear appeals of decisions of the USPTO, as well as oppositions and cancellations.
4.2 What is the procedure for appealing a trademark office refusal?
An appeal is taken by filing a notice of appeal and paying the appeal fee within six months of the date of issuance of the office action from which the appeal is taken. Details can be found at Trademark Manual of Examining Procedure §1501.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
The applicant may request rehearing, reconsideration or modification of a decision of the TTAB by filing a request with the TTAB within one month of the decision (TBMP §1219.01).
The applicant may seek review of a final decision of the Trademark Trial and Appeal in two ways:
- by appeal to the US Court of Appeals for the Federal Circuit, which will review the matter based only on the evidence submitted to the USPTO; or
- by seeking review in a civil action in a US district court (federal civil court of first instance) (Lanham Act §21, 15 USC §1071; TBMP §1219.02).
To initiate an appeal to the US Court of Appeals for the Federal Circuit, the applicant must file a notice of appeal with the USPTO within 60 days of the decision from which the appeal is taken (15 USC §1071(a); TBMP §902.01). The Federal Circuit will consider the appeal based on the existing evidentiary record before the TTAB - it is not possible to submit new evidence to the Federal Circuit.
To seek review of a decision of the TTAB in a US district court, the applicant must file a new civil action in the court for the appropriate federal district within 60 days of the decision from which the appeal is taken (15 USC §1071(b); TBMP §903.01). In ex parte cases, the appropriate federal district is the US District Court for the Eastern District of Virginia - the district in which the USPTO is situated (TBMP §903.03). Because this is a new civil action, the applicant may submit new evidence to the district court that was not before the TTAB.
5.1 Can a third party oppose a trademark application?
5.2 Who has standing to oppose a trademark application?
Under Section 13 of the Lanham Act (15 USC §1063), any party that believes it would be damaged by registration of a mark has standing to oppose a trademark application.
5.3 What is the timeframe for opposing a trademark application?
Within 30 days of publication, although this can be extended by another 30 days upon request or by 90 days with good cause shown; a longer extension may be possible with the consent of the applicant, but in no case may this exceed more than 180 days from publication (Trademark Manual of Examining Procedure §1503.04 and 37 Code of Federal Regulations §2.102).
5.4 Which body hears oppositions?
The Trademark Trial and Appeal Board (TTAB).
5.5 What is the process by which an opposition proceeds?
An opposition generally follows the same procedure as a lawsuit in a US federal court, except that instead of presenting evidence to the trier of fact in the form of exhibits and testimony adduced at trial, the parties submit their exhibits and testimony (in transcript form) in a written record, in advance of an oral hearing before the judges of the TTAB. The complete procedure is detailed in the Trademark Trial and Appeal Board Manual of Procedure (TBMP), which can be found at http://tbmp.uspto.gov.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
A party which is dissatisfied with a decision of the TTAB may appeal it to the US Court of Appeals for the Federal Circuit, or may bring a civil action in a US district court for an adjudication of whether a registration should be issued or cancelled (TBMP §901.01).
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
Unregistered trademarks that a seller uses in US or local commerce to identify its goods or services are recognised and protected by the common law. The common law provides a cause of action for trademark infringement. In addition, Section 43 of the Lanham Act (15 USC §1125) provides owners of unregistered marks with causes of action for false designations of origin (construed as trademark infringement) and for dilution of famous marks by blurring or tarnishment.
6.2 What legal rights are conferred by a trademark registration?
Registration on the Principal Register confers the following rights:
- the right to use the ® registered trademark symbol;
- the right to file suit for trademark infringement in federal court and seek monetary relief;
- a bar to registration of another mark that might give rise to a likelihood of confusion;
- a basis for an international trademark application;
- a statutory presumption that the mark is valid, the owner is the owner of the mark and the owner has the exclusive right to use the mark;
- proof that the mark has acquired secondary meaning;
- constructive notice of the owner's claim of ownership;
- nationwide priority as of the filing date; and
- after five years of continuous, substantially exclusive use, incontestability (limiting the defences that may be asserted against it).
See Sections 7 and 15 of the Lanham Act (15 USC §§1051, 1065).
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
Registration on the Supplemental Register confers the following rights:
- the right to use the ® registered trademark symbol;
- the right to file suit for trademark infringement in federal court and seek monetary relief;
- a bar to registration of another mark that might give rise to a likelihood of confusion; and
- a basis for an international trademark application.
See Sections 23 to 28 of the Lanham Act (15 USC §§1091-96).
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
Section 32 of the Lanham Act (15 USC §1114) provides a cause of action for infringement of a registered trademark; while Section 43(a) of the Lanham Act (15 USC §1125(a)) provides a similar cause of action for uses of designations that are likely to cause confusion with registered or unregistered marks. Under Section 35 of the Lanham Act (15 USC §1117), remedies for violations of either of these sections include:
- injunctive relief;
- seizure and destruction of infringing articles;
- disgorgement of the infringer's profits; and
- recovery of the plaintiff's damages, costs and, in ‘exceptional cases', reasonable attorneys' fees.
Some courts hold that a plaintiff must prove that the defendant was a wilful infringer (ie, intended to trade off the goodwill of the plaintiff's mark), or that there was actual confusion, in order to recover monetary relief. Section 35 provides for treble damages for the use of a counterfeit mark.
7.2 What remedies are available against trademark dilution?
Under Section 43(c) of the Lanham Act (15 USC §1125(c)), the remedy for trademark dilution is an injunction, but a plaintiff that proves wilful violation of this section may recover monetary relief available under Section 35, as discussed in question 7.1.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
The Lanham Act provides for various other remedies, such as a cause of action under Section 38 (15 USC §1120) against anyone that procured a registration by fraud. Section 42 of the act (15 USC §1124) prohibits the importation of goods bearing infringing marks.
7.4 What is the procedure for pursuing claims for trademark infringement?
The trademark owner must bring a civil action in court. Most often, those actions are brought in a US district court, which is the court of first instance in the US federal system. Each US state or territory has one or more district courts covering a defined region. Where the parties are citizens of the same US state and the plaintiff alleges violations of state law only, the action may be brought in state court. The federal and state judicial systems are separate.
7.5 What typical defences are available to a defendant in trademark litigation?
Typical defences in a trademark action in the United States include:
- descriptive fair use (ie, use not as a mark, but to describe one's goods or services or qualities thereof);
- nominative fair use (ie, use of the plaintiff's mark to refer to the plaintiff);
- laches (ie, unjustifiable delay);
- unclean hands;
- trademark misuse (eg, use of a trademark to restrain trade);
- that the plaintiff obtained its registration by fraud on the US Patent and Trademark Office; and
- that the use is protected by the guarantee of free speech under the First Amendment to the US Constitution.
7.6 What is the procedure for appealing a decision in trademark litigation?
A party dissatisfied with a judgment of a federal district court or a state trial court can appeal it to, respectively, the US court of appeals for the regional circuit in which the case was heard or the state appellate court. There are 12 regional circuit courts of appeals. Generally, only a final judgment can be appealed, but certain interlocutory decisions (eg, grant or denial of a preliminary injunction) can also be appealed.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
The initial term of a US federal registration is 10 years, but the registrant must submit to the US Patent and Trademark Office (USPTO) proof of use of the mark in US commerce for all goods and services identified in the registration between the fifth and sixth anniversaries of registration or the USPTO will cancel the registration (Section 8 of the Lanham Act, 15 USC §1058). If the mark has been in continuous, substantially exclusive use for five years from registration, the registrant may also submit a declaration of incontestability under Section 15 of the Lanham Act (15 USC §1065), which thereby limits the defences that may be asserted against the registration.
If the trademark owner is not using the mark in US commerce for all goods or services identified in the registration as of before the maintenance or renewal date, the trademark owner should delete from the registration those items for which the mark is not in use before submitting the affidavit. Otherwise, the registration could be challenged on the ground of filing a false use affidavit. If the trademark owner is unable to make use of the mark for excusable reasons (eg, if a key component must be imported from a country that is under a boycott or suffering internal strife, or if a key factory was destroyed and is being repaired), it may submit a declaration of excusable non-use.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
The trademark owner must submit an affidavit verifying that it is using the mark in the ordinary course of trade in US commerce for all goods and services identified in the registration, along with a specimen of use:
- between the fifth and sixth anniversaries of the registration, as noted in question 8.1;
- then within the one-year period immediately preceding the expiration of 10 years from the date of registration; and
- then the same again for each successive 10-year period thereafter.
See Sections 8 and 9 of the Lanham Act (15 USC §1058-59).
8.3 What are the grounds for cancelling a trademark registration?
Any party that believes it is or will be damaged by a registration may petition for cancellation under Section 14 of the Lanham Act (15 USC §1064). The typical grounds for cancellation include the following:
- There is a likelihood of confusion with a senior (earlier used) mark;
- The mark has become generic;
- The trademark owner has abandoned the mark (ie, has discontinued use with an intention not to resume use); and
- The trademark owner obtained the registration by fraud.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
If a trademark owner fails to submit the required proof of use of the mark under Section 8 or 9, the USPTO will cancel the registration.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
The procedure is much the same as that for opposing a trademark application, as discussed in question 5.5.
8.6 What is the procedure for appealing a decision cancelling a registration?
The procedure is much the same as the procedure for appealing an opposition decision, as discussed in question 5.6.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
Yes. A licensor must exercise control over the quality of the licensee's goods or the licence will be deemed a ‘naked licence', which could result in abandonment of the trademark.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
Although a trademark owner must use the mark in US commerce in order to have trademark rights, the owner of a foreign trademark may, in certain circumstances, have standing to sue a third party that is using its mark in the United States for unfair competition under Section 43(a) of the Lanham Act (15 USC §1125(a)). The US Court of Appeals for the Fourth Circuit held in 2016 that the owner of a trademark used in Mexico would have standing to bring such a claim if the defendant's use would deceive immigrants and others crossing the US-Mexico border who were familiar with the plaintiff's branded product in Mexico (Belmora LLC v Bayer Consumer Care AG, 819 F3d 697 (4th Cir 2016)). This is an unusual case, and the decision recognising the rights of the foreign trademark owner may rest on the close social, familial and commercial ties between Southern California and Mexico, and the fact that the alleged infringer had evidently sought to capitalise on the reputation of the plaintiff's brand in Mexico by targeting Mexican immigrants and Mexican-Americans in California.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
Yes. Although the US Patent and Trademark Office does not require proof of use of the mark in US commerce before granting registration of a mark based on a foreign or Madrid registration, the trademark owner must submit proof of use as noted in questions 8.1 and 8.2 in order to maintain or renew the registration. In addition, the foreign applicant must have a bona fide intent to use the mark in US commerce for all goods or services identified in the application; otherwise, the application may be void. The Trademark Trial and Appeal Board will refuse registration of a foreign-based application where it determines in an opposition that the application lacked such bona fide intent.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.