Introduction
In the United States, trademark rights are acquired via the actual use of a mark in commerce in connection with the offer and sale of goods or services. However, one may preserve their right to begin use a mark, by filing an "intent to use" application with the United States Patent Office (which will be discussed in more detail). Absent registration, actual use will empower the trademark owner only with common law rights. If actual use is occurring within a particular state and the mark is registered at the state level, the trademark owner will be granted additional state law rights and protections. Actual use in interstate commerce (more than one state) and registration at the federal level will grant the trademark owner with federal trademark protection which carries many additional benefits.
Common Law Trademark Ownership
Trademark rights in the United States are obtained through actual use of a trademark in connection with the offering of goods or services in commerce. Absent registration at either the state or federal level, the trademark owner is granted common law protection, which are rights that have been granted from court rulings, as opposed to statute. The first person to use a Mark in commerce in connection with the offer or sale of goods or services has a common law right to prevent others from using the mark, or confusingly similar mark, in a manner that is likely to confuse consumers. However, common law protection may be confined to the established market such that others may register the identical Mark for use outside that pre-established market. The established market will be defined to consist of places where the common law owner can prove he had actually offered and/or provided his services and / or goods.
State Trademark Registration
If a trademark is used only intrastate, that is, within only one state, then registration at the state level is appropriate as a pre-requisite to registration at the federal level is use in interstate commerce or use between a state and foreign country. Registration at the state level provides constructive notice to all that the Mark is being used throughout the state and depending on the state may provide additional benefits such as the right to attorneys' fees and costs, and state anti-dilution protection in the event another attempts to use the trademark, or a confusingly similar mark. Although the majority of states require actual use to file a state trademark application, some states now permit registration based on intent to use the trademark. One benefit to registration at the state level, that often leads companies to register both a state and federal application, is that registration at the state level can often be accomplished within 2 to 6 weeks, whereas federal registration often takes 18 months. In addition, registration at the state level is significantly less expensive than registration at the federal level.
It is important to reiterate that the laws of each state differ as to the scope of protection they afford to Trademark registrants. Some states provide certain protections unavailable through just federal registration, so some trademark owners register their trademark at both the state and federal level.
Federal Trademark Registration
A pre-requisite to registration of a Mark at the federal level is actual use of a mark either in interstate commerce (in more than one state) or in a state and other foreign county. However, it is possible to file an "intent to use" application with the United States Patent Office before actual use occurs, so long as the registrant has a good faith intent to use the mark. Under certain circumstances and the filing of extensions, an "Intent to Use" application can be extended for up to two years.
To complicate matters further, federal trademark registration can be accomplished on either the Principal Register or Supplemental Register. For various reasons, registration on the Principal Register is vastly more beneficial than registration on the Supplemental Register, which occurs when the mark sought to be registered is deficient in some manner.
Registration on the Principal Register carries with it the following benefits: (1) it creates a presumption in favor of the registrant's exclusive rights nationwide; (2) it provides constructive notice to any subsequent use of the registrant's rights; (3) it grants the registrant the right to use the (r) symbol with the Trademark; (4) in the event of infringement, the registrant is given the right to attorney's fees and costs; and finally (5) after five years the trademark may become incontestable on all but a few narrow grounds.
Registration on the Supplemental Register generally occurs when an applicant seeks to register a descriptive or laudatory Mark not yet sufficiently distinctive for registration on the Principal Register. Unlike marks that are capable of being registered on the Principal Register, marks registered on the Supplemental Register do not permit the presumption of exclusivity.
Nevertheless, registration on the Supplemental Register does provide the following benefits: (2) notice to others of the registration; (2) use the (r) symbol with a Mark; and (3) if the mark becomes distinctive after five years of continuous use, some marks registered on the Supplemental Register can be moved to the Principal Register.
Foreign Trademarks
In the United States, rights to a mark are obtained through actual use. In many foreign countries, however, ownership is obtained by the first to file. This has proven to be a major problem for United States companies that plan to offer or sell their goods and/or services abroad, especially where the registration is sought in the United States first, only to find that the mark selected and filed for registration has already been registered by a foreign opportunist.
Registering the Mark with Customs
Once a trademark has been federally registered in the United States, you should seriously consider filing your trademark with United States Customs to help prevent the importation of confusingly similar goods manufactured outside the United States and imported with the same, or a confusingly similar, trademark. This is a valuable process to help stop "gray market" look-a-likes.
Proper Use Of Your Mark
Proper usage may be the most important means of protecting a name. One example is the continuing struggle of KLEENEX to keep its name as a trademark and not as a generic term for a tissue. If generic, there is no protection. Examples of other Marks becoming generic are "BAND-AID", "HOOVER" and "XEROX".
There are a number of guidelines to protect a Mark. Here are some guidelines:
- Use the Mark as an adjective followed by the generic name of the product. A Trademark is neither a noun nor a verb.
- Do not use the Mark in the plural or possessive form.
- Use the Mark consistently in one manner only as changes may create a new and different mark. Do not use hyphenated variations or combine the Mark with other words.
- Use the mark distinctively (a requirement for registration). A mark should always be written in a manner that distinguishes it from the rest of the text
- Always apply the proper trademark notice.
- TM if the mark is unregistered an refers to a product.
- SM if the mark is unregistered an refers to a service.
- ® For a Trademark registered with the U.S. Patent & Trademark Office.
