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Trademark Law USA USPTO

Written by: Kaviraj Singh

Article Overview: A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services. A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner's permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy.

Trademark Law USA USPTO

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services

A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner's permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.

Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration. The federal registration has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. The registration can be used as a basis for obtaining registration in foreign countries. The registered trademark may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

It is not necessary to be US residents to file the trademark application. However, an applicant's citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the certificate of registration.

The federal registration symbol may be used once the mark is actually registered in the U.S. Patent and Trademark Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration.

The applicant may seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application," with the International Bureau of the World Intellectual Property Organization, through the USPTO. Also, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties.

It is advisable to conduct a search of the Office records before filing an application. A common law search involves searching records other than the federal register and pending application records. It may involve checking phone directories, yellow pages, industrial directories, state trademark registers, among others, in an effort to determine if a particular mark is used by others when they have not filed for a federal trademark registration. A common law search is not necessary but some find it beneficial. Telephone numbers for search firms that perform these searches for a fee can be found in the yellow pages of local phone directories and through an Internet search.

A specimen is a real-world example of how the mark is actually used on the goods or in the offer of services. Labels, tags, or containers for the goods are considered to be acceptable specimens of use for a trademark. For a service mark, specimens may be advertising such as magazine advertisements or brochures. Actual specimens, rather than facsimiles, are preferred. However, if the actual specimens are bulky, or larger than 8½" x 11", then the applicant must submit facsimiles, (e.g., photographs or good photocopies) of the specimens. Facsimiles may not exceed 8½" x 11". ONE SPECIMEN IS REQUIRED FOR EACH CLASS OF GOODS OR SERVICES SPECIFIED IN THE APPLICATION.

Specimens are required in applications based on actual use in commerce, Section 1(a), 15 U.S.C. §1051(a), and must be filed with the Amendment to Allege Use, 15 U.S.C. §1051(c) , or the Statement of Use, 15 U.S.C. §1051(d), in applications based on a bona fide intention to use the mark in commerce, Section 1(b), 15 U.S.C. §1051(b). Specimens are not required for applications based on a foreign application or registration under Section 44 of the Trademark Act, 15 U.S.C. §1126, or for applications based on an extension of protection of an international registration to the United States under Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

The "drawing" is a page which depicts the mark applicant seeks to register. In an application based on actual use, Section 1(a), 15 U.S.C. §1051(a), the drawing must show the mark as it is actually used, i.e., as shown by the specimens. In the case of an application based on a bona fide intention to use, Section 1(b), 15 U.S.C. §1051(b), the drawing must show the mark as the applicant intends to use it. In an application based on a foreign application or foreign registration, Sections 44(d) or 44(e), 15 U.S.C. §§1126(d) or (e), the drawing must depict the mark as it appears or will appear on the foreign registration. The applicant cannot register more than one mark in a single application. Therefore, the drawing must display only one mark. A drawing is required in all applications, and is used by the Office for several purposes, including printing the mark in the Official Gazette, and on the registration certificate. A specimen, on the other hand, is required as evidence that a mark is in actual use in commerce.

A foreign applicant file an application for registration on the following basis:

1. Use in interstate commerce or commerce between the United States and a foreign country.
   
   

2. Bona fide or good faith intention to use the mark in interstate commerce or commerce between the United States and a foreign country.

3. Ownership of an application filed in a foreign country (if within six months of the foreign filing date).

4.Ownership of a foreign registration (with a copy).

5. Extension of protection of an international registration to the United States under the Madrid Protocol, pursuant to section 66(a) of the Trademark Act.

The Trademark Office will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered. Additionally, Section 2 of the Trademark Act (15 U.S.C. §1052) contains several of the most common (though not the only) grounds for refusing registration. The grounds for refusal under Section 2 may be summarized as:

1. The proposed mark consists of or comprises immoral, deceptive, or scandalous matter;

2. The proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;

3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;

4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;

5. the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception;

6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant's goods or services;

7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services;

8. the proposed mark is primarily merely a surname; and matter that, as a whole, is functional.

For a trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year, with payment of an additional fee. The registrant must also file a §9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee.

Assuming that an affidavit of use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term. This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.

An applicant may file an Amendment to Allege Use any time between the filing date of the application and the date the Examining Attorney approves the mark for publication. If an Amendment to Allege Use is not filed, then applicant has six months from the issuance of the Notice of Allowance to file a Statement of Use, unless the applicant requests and is granted an extension of time. If the applicant fails to file either an Amendment to Allege Use or a Statement of Use within the time limits allowed, then the application will be declared abandoned. No registration will be granted.

There are several ways to dispute use of your trademark by a third party. Depending on the factual situation, the Trademark Office may or may not be the proper forum. You should consider contacting an attorney, preferably one specializing in trademark law. Local bar associations and the yellow pages usually have attorney listings broken down by specialties. Time can be of the essence. For information about proceedings before the Trademark Trial and Appeal Board,

Related Articles
  What is a Trademark?
  What's the Point of Getting a Federal Trademark?
  Trademark Renewal & Maintenance – How Do I Keep My Trademark?
  How Do You Get a Trademark?
  Do You Need a Registered Trademark?

Article Tags: brand name, certification mark, kaviraj, trademark law, trademark law usa, trustman, uspto



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