The below is intended to offer some answers and general information with respect to a number of the more frequently raised questions regarding the law and procedures surrounding trademarks in the USA. This information is not intended as legal advice. Instead, it is offered as a handy reference for individuals and companies with questions about the protection of logos, marks, and slogans used when doing business or selling goods and services in the American marketplace. Of course, when considering how best to protect one's intellectual property, one should always consult competent legal counsel expert in the law of intellectual property.
Both service marks and trademarks (herein "marks") are symbols, words, and combinations thereof that are designed to identify the source of and distinguish goods and services. Succeeding in business in the competitive American marketplace requires one to protect one's mark - even when good or services will only be sold within one state. As much as patents and copyrights, trademarks are an important and integral part of a company's intellectual property portfolio. In the USA, trademarks quickly become synonymous with a company's name and reputation. Accordingly, from the very beginning of one's efforts in the American marketplace, it is very important that companies choose an appropriate mark and then actively protect it. Failure to file for protection of a mark most often results in being continually forced to allow others to use one's mark or, at worse, losing all goodwill in a mark by being forced to change one's mark altogether. By taking proper protective measures from the beginning, a company can save great investments of time, money, and goodwill in the future. The above should be considered when considering how best to succeed in doing business in the United States.
Do I Have Any Rights if I Fail to Register My Mark? - In the United States, it is not required to register a mark federally to establish trademark rights. Contrary to European law, the mere use of a mark in the United States creates "common law" state-based rights in a mark. These state-based rights, however, place the holder of the otherwise unregistered trademark in the USA at mercy of a latter federal registrant who then obtains rights to the mark by grant of the Patent and Trademark Office (herein "PTO"). The holder of mere common law rights to a mark, if later challenged, runs the risk of having use limited to a certain geographic region or in market channels that have been judicially restricted.
What is Required to Obtain Protection of a Trademark? - Registration of the mark in the United States requires that the mark be in use and continue to be used in commerce within the U.S. For the purposes of defining "use in commerce" in the context of registration, "commerce" between a foreign country and the United States is acceptable "use". Even if one intends to use the mark, yet has not yet used the mark in commerce, an "intent-to-use" based application can be filed. In the case of an "intent to use" application, the applicant need only submit a document at a later time confirming that the mark has begun to be used in commerce. That document must be submitted to the PTO no later than six (6) months after being advised by the PTO that the mark is otherwise in order to be registered. Where no timely confirmation of use is received by the PTO, the application will be deemed to have been abandoned.
What Are the Benefits of Registering a Mark? - There are a number of benefits to registering your mark. To begin with, a Certificate of Registration provides constructive notice to all persons and entities of your rights of ownership in the mark. In addition, contrary to being limited to obtaining legal redress in state courts for marks not registered with the PTO, federal registration ensures the holder of a registered mark access to the federal courts of the United States. By federally registering a mark, the holder is also able to use the American application or registration as the basis for applications for registration in countries throughout the world. Lastly, once registered, the owner of the mark can file the registration with the U.S. Customs Service and thereby prevent goods from being imported into the United States that infringe the mark.
The Process Prior to Submitting an Application - In considering the filing of a trademark application, it is highly recommended that a pre-application search be conducted in order to determine if the mark is actually available for registration. The simplest searches are usually conducted by your attorney. In the case the mark appears to be available after making a pre-application search, a national, formal search should be conducted. Depending upon the sort of mark being considered for registration, a formal search is usually conducted by an outside agent who specializes in national trademark searches. The cost of an average search usually ranges between $700 and $1,400. When a mark shows itself to be available, an application may be filed. An application states the type of application being sought and names each of the various classes for which registration is being sought. For each class applied for in the application, the PTO filing fee of $335 per class must be submitted with the application. An application for registration of a trademark may only be filed by its owner. If any other person other than the true owner of a mark attempts to file the trademark application, the application will be deemed to be void by the PTO. When an application is submitted by a company or organization, the application must be signed by a person who has formal authority to sign on behalf of the organization. Trademark law does not require that an applicant for a USA trademark be a citizen of the United States.
The Application Process - An application for a "use" based trademark consists of a completed application, the Declaration, the drawing page, and three (3) specimens. An "intent-to-use" application does not require filing of the three (3) specimens. Within six (6) months of filing the application, the PTO will forward a filing receipt containing the application serial number. Once accepted for registration, the PTO will then forward a Notice of Allowance to the applicant. In a few exceptional cases, registration can be obtained within one (1) year of the date of application. An Office Action, however, will be issued if the PTO raises questions or requires explanations as to any aspect of the application. In such case, a response must be filed no later than six (6) months from the date of the PTO's mailing of the Office Action. Generally, registration of most marks takes no more than one (1) to two (2) years from the date of the application's filing. Sixteen (16) months is the average time required for securing registration.
Can My Home Country Application/Registration Be Used to Apply Abroad? - Once realized, an application or registration may be used to file an application outside of one's home country. Under U.S. law, however, a U.S. application is required to be filed no later than six (6) months after the original filing date of the non-U.S. application. If this date is not met, an application may be filed at a latter date using the actual foreign registration as its basis. To file such an application, the owner of the foreign mark must submit to the PTO a translation of the foreign registration document and a "certification" or a certified copy of the actual non-U.S. registration. In the case the foreign application is not fully prosecuted abroad, a traditional "use" or "intent-to-use" application can be filed here in the United States.
For how long does a trademark exist? - A trademark can last indefinitely. So long a trademark is used continuously and all maintenance and renewal fees are filed in a timely manner, a trademark in the USA will not lapse. Marks registered after November 16, 1989 must be renewed every ten (10) years. In order to maintain the mark as properly registered, the holder must file a Section 8 Affidavit alleging continued use with the PTO. This document, together with a Section § 15 Affidavit (alleging the mark’s incontestability), must be filed between the fifth (5th) and sixth (6th) years following registration. These Affidavits must be accompanied by respective filing fees of $100 and $200 per class. In addition, a Section § 9 Renewal Application must be filed within the year prior to the expiration date of a registration (10 and 20 years), or within the grace period of six (6) months after that expiration date, with payment of a renewal fee of $400 per class.
May I Protect my Domain Name as a Trademark in the USA? - In order to be registered as a trademark, Internet domain names must fulfill the same requirements that apply to all trademark applications. An additional requirement is that the applicant must show that its goods or services are offered over the Internet. Moreover, specimens must be provided to the PTO showing that the domain name is being used as a "source identifier". If the domain name is merely used as a "directional reference", the registration will not be allowed. In order to be allowed registration, the domain name must be able to enable consumers to identify the exact source of the services being described on the website. The chances of having a domain name registered as a trademark increases greatly if the domain is distinctively presented and placed apart from the other information provided in the specimen.
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