Trademarks – Overview of U.S. Trademark Law for the International Client

As one of the world’s largest marketplaces, the United States is a desirable market for goods and services from around the world. Fortunately for international clients, achieving trademark protection for your products and services is very feasible for everyone. There are a number of general procedures, and a few special rules that apply to international clients. The following information is intended for general information purposes only. Please contact a qualified United States trademark attorney for specific legal guidance.

What Is The Difference Between A Patent, A Trademark, And A Service Mark?
A patent protects an invention. A patent gives the holder the right to exclude others from making, using, offering for sale, selling, or importing the invention into the United States. There are two major types of United States patents, utility patents and design patents. There is a third type, a plant patent, that can be used to protect certain new varieties of botanical plants.

A utility patent protects the way an invention works and is used, or as stated in the law, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof….”

A design, under U.S. patent law, consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.

Both design and utility patents may be obtained on an article if the nature of the invention involves both utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics. It can be difficult to separate functional and design characteristics and the guidance of an experienced patent attorney can be helpful. For more information on patents, please consult the U.S. Patent Protection page of this website. Patents and trademarks are often used together to protect intellectual property. Again, an experienced patent attorney will be able to help guide you as to the best route to obtain the most comprehensive protection.

Trademarks
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Because users come to identify trademarks with a distinctive experience of quality, reliability, price, or other factors, trademarks can be significant tools for marketing a business.

Service Marks
A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. There are no differences in the legal protections offered by United States trademarks and service marks. In the remainder of this website, we may use the terms “trademark” and “mark” to refer to both trademarks and service marks.

Should Trademarks Be Registered In The United States?
Many people are surprised to learn that U.S. federal registration of a trademark is not required. One can acquire some legal rights in the United States to a trademark based on legitimate business use of a mark, and registration in the United States is possible on a state by state basis. However, there are significant legal advantages to possessing a U.S. federally registered mark:
- Federal registration serves as “constructive notice” to the public of the registrant’s claims to the mark. In other words, infringers are deprived of the defense that they didn’t know of the trademark’s existence.
- The ability to bring a lawsuit in the United States Federal Court system.
- The ability to have the United States Customs Service help stop the importation of infringing goods into the United States.

Who Can File for a U.S. Trademark?
One does not need to be a United States citizen, or even to reside in the United States, to apply for a U.S. trademark. Applications may be made by individuals, partnerships, or corporations, or certain other business associations. If the applicant does not reside in the United States, the applicant must appoint a domestic U.S. representative, who may be any person residing in the United States. As this person serves as a legal representative to receive any notices or court papers that may be served for proceedings affecting the mark, it is vital that this domestic representative be available to handle legal correspondence concerning the mark. Generally, most international applicants will appoint a U.S. trademark attorney as their domestic representative. The United States Patent and Trademark Office must be kept informed, in writing, of any changes in correspondence address that occur during the application process.

How Does One File For A U.S. Trademark?
The United States Patent and Trademark Office (USPTO) is encouraging the electronic filing of trademark applications. Their system is called TEAS (Trademark Electronic Application System) and is available on the official website: www.uspto.gov. While the U.S. government is currently discouraging paper applications, it is still possible to file a paper application. The USPTO will not accept facsimile (FAX) filings.

While electronic filing is fast and easy, it is very important that you have a sound understanding of important concepts such as trademark searching, basis for filing, trademark classes, use in commerce, intent to use, and specimens, just to name a few. The U.S. Trademark Office expects all applicants to comply with the same rules and regulations that attorneys do, and will not apply a lower standard for compliance on individuals filing their own applications. Once an application has been received by the U.S. Trademark Office and assigned a filing date, fees will not normally be refunded because of applicant errors.

Can International Registrations Be Recognized In The United States?
Prior international registrations can confer advantages in applying for a U.S. trademark. The United States is a member of the Paris Convention for the Protection of Industrial Property of 1883 and subsequent revisions to that treaty agreement, the Inter-American Convention for Trademarks and Commercial Protection (also known as the “Pan-American Convention”), the Buenos Aires Convention for the Protection of Trade Marks and Commercial Names, the World Trade Organization, and certain other treaties and agreements.

The United States is not a member of the Madrid System for the International Registration of Marks, which provides an international trademark register, administered by WIPO, for member countries. Thus, registrations issued under that agreement are not acceptable as a basis for registration in the United States.

Section 44 of the Trademark Act, 15 U.S.C. §1126, implements these agreements. Section 44 applications fall into two basic categories: (1) United States applications relying on international applications to secure a priority filing date in the United States under §44(d); and (2) United States applications relying on ownership of international registrations as a basis for registration in the United States under §44(e).

To be eligible for a priority filing date under §44(d), an applicant’s country of origin must be a party to an international treaty or agreement with the United States that provides a right of priority, or must extend reciprocal rights of priority to United States nationals; and the international application that is the basis for the priority claim must be filed in a country that is a party to a treaty or agreement with the United States that provides a right of priority, or must extend reciprocal rights to priority to United States nationals. An application under this section must be made within six months of the filing of the international application. A qualified U.S. trademark attorney will be able to provide current information on countries that exist in such relationships with the United States.

To be eligible for registration under §44(e), an applicant’s country of origin must either be a party to a treaty or agreement with the United States that provides for registration based on ownership of a international registration, or extend reciprocal registration rights to nationals of the United States; and the applicant must be the owner of a valid registration in the applicant’s country of origin.

On December 20, 1993, the European Council issued Regulation No. 40/94, establishing a single system of trademark registration, known as the Community Trade Mark (CTM), which is an alternative to the various registration systems of each nation within the European Community. An international applicant may seek registration in the United States based on either (a) a valid CTM registration, or (b) a CTM application, with a right of priority if the United States application is filed within 6 months of the date of the first filing of the CTM application. The World Trade Organization (WTO), established on January 1, 1995, is the embodiment of the results of the Uruguay Round trade negotiations and the successor to the General Agreement on Tariffs and Trade (GATT). Article 4 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) contains a most-favored-nation clause under which any advantage a member gives to the nationals of another member must normally be extended to the nationals of all members. The WTO Agreement entered into force in the United States on January 1, 1996. The benefits accorded to nationals under this agreement by the United States date from January 1, 1996.

Under appropriate circumstances, an application may be filed under both §44(d) and §44(e). A registrant must be the bona fide owner of the mark, and applications may be filed on either a “use in commerce” or “intent to use” basis. (See What Is A “Basis” For Filing A U.S. Trademark Application?) As with any international holder of a U.S. trademark, the registrant must appoint a domestic U.S. representative to receive notices and legal process regarding the mark.

What Is A Trademark Search?
Since the purpose of allowing U.S. federal trademark registration is to prevent new trademarks from causing confusion with currently registered marks, it is not surprising that the United States Patent and Trademark Office will not register a mark that is the same, or too close, in sound or appearance, to an already registered mark. A very difficult area of U.S. trademark law is determining just when a proposed mark is “too close” to an existing mark to allow a new registration. Two basic factors intersect in this determination. First, is the mark itself confusingly similar to an existing mark? Second, are the goods or services to be marketed under the proposed mark so close to those of an existing business as to cause public confusion?

As a practical matter, this means that it is often times possible to have more than one business using the same trademark, if the nature of their goods or services is so different that consumers would not be confused as to the difference between the two businesses. Therefore, we must look both to appearance and to the type of business to determine the likelihood of successfully applying for a U.S. trademark.

The first step in making this determination is to conduct a trademark search. Since trademarks do not need to be federally registered to have at least some legal effect in the United States, it is necessary to do a reasonably wide ranging search. It is possible to search trademarks on the USPTO website, www.uspto.gov, but that database is limited only to federally registered marks, and does not contain many other trademarks in use in the United States and elsewhere.

A comprehensive trademark search utilizes a proprietary database system that allows one to search United States Federal and State registrations and applications, common law and Internet usage, Canadian registrations, European registrations, World Intellectual Property Organization (WIPO) registrations, and United Kingdom registrations. While this does not give absolute assurance that a trademark will be granted, it does give an indication of the current state of use of a proposed mark in some of the world’s largest trademark systems. Please consult the Schedule of Fees page, for details on current fees for such a search and opinion.

What Are “Classes?”
Since one the most important factors the United States Patent and Trademark Office considers in its evaluations of proposed marks is the likelihood that consumers will be confused by similar marks, the Trademark Office looks at the nature of the goods or services sought to be offered under the mark. As an aid in analyzing this issue, existing trademarks are organized into the International Schedule of Classes of Goods and Services, which consist of 34 classes of goods and 11 classes of services. These classes may be viewed at here.

Proper analysis of a trademark search will include consideration of the proposed mark against other similar marks and the classes in which those marks are registered. Similar marks in the same class are unlikely to be registered, while similar marks in very different classes may well be granted.

What Is A “Basis” For Filing A U.S. Trademark Application?
Other than filings based on some international trademarks (See “Can International Registrations Be Recognized In The United States?”), the United States Patent and Trademark Office allows two different “bases” for filing an application; “use in commerce” and “intent to use.”

“Use in commerce” is the easiest to understand, and means that the mark is already being used in any form of bona fide commerce that the United States Congress may lawfully regulate. This includes interstate commerce, that is, commerce between different states, territories, or possessions of the United States; or international commerce between the United States and another country. Bona fide commerce is the type of business operation that would be expected to take place in the normal course of business for a product or service of the type being offered for registration. Sham transactions or transactions made only in an attempt to secure rights will not be recognized.

If the mark is already being used in commerce, one may file based on that use. A “use in commerce” application must include a sworn statement that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. The “use in commerce” application must include a specimen (See “What Is A Specimen?”).

Trademark applications may also be filed on an “intent to use” basis. This means that while the applicant has not already started using the mark in commerce, they have a bona fide intent to begin doing so. After a Notice of Allowance is issued for the mark, the applicant is given six months to file a supplementary Statement of Use showing actual use in commerce. “Intent to use” filing can have significant advantages for the applicant, as it allows one to reserve a trademark before actually bringing the goods and services to market.

The mark is not formally registered until the mark is actually used in commerce. It is important to note that, at that time, additional documentation is required and an additional fee is paid to convert the “intent to use” into a “use in commerce” application. If the introduction of a new product or service is delayed beyond the six month time period, it can be possible to have this time limit extended for up to an additional thirty months. An experienced United States trademark attorney can give you guidance in this area. Please consult the Schedule of Fees page, for details on current fees.

Under some conditions, applications or registrations that have already been filed internationally may be recognized as a filing basis (See “Can International Registrations Be Recognized In The U.S.?”).

What Is A “Specimen?”
Applications made on a “use in commerce” basis must include an actual example of how the mark is used in commerce or in connection with the identified goods and/or services. This is not the same as the drawing of the mark, which represents the mark as claimed.

A specimen for a mark used on goods normally shows the mark on the actual goods or packaging for the goods. This may be a tag or label from the goods; a container for the goods, a display associated with the goods, or a photograph that shows use of the mark on the goods. The actual product is not submitted. It is very important to note that invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead stationery, and business cards are generally not acceptable as specimens for goods.

A specimen for a service mark must show the mark used in the sale or advertising for the services. This is significantly different from the rules concerning specimens for trademarks, where advertising type materials are generally not allowed. A specimen for a service mark may consist of a sign, a brochure about the services, an advertisement for the services, a business card or letterhead stationery showing the mark in connection with the services, or a photograph showing the mark as used in rendering or advertising the services. The specimen must make reference to the type of services rendered on the specimen, and not just a depiction of the mark itself.

Since it is, by definition, representing goods or services not yet placed in commerce, an application filed on an “intent to use” basis does not require a specimen, although a specimen will later be required.

Applications based solely on an international application or registration under §44 do not require specimens. However, specimens are required if alleging either actual “use in commerce” or “intent to use.”(See “Can International Registrations Be Recognized In The U.S.?”)

Specimens can be filed electronically or as paper copies. One specimen must be supplied for each class of goods or services listed in the original application (See “What Are Classes?"). Choosing the proper specimen to submit with an application is important. An experienced Untied States trademark attorney can give you guidance in this area.

How Long Do U.S. Trademarks Remain in Force?
As long as they are used in bona fide commerce, it is possible to extend U.S. Trademarks indefinitely. However, very close attention must be paid to their proper use and maintenance.

First, renewal fees must be paid. A new mark needs to be renewed at six years and ten years after grant. Thereafter, the mark must be renewed every ten years.

Second, the mark must be continuously used in commerce in the United States. While petitions to excuse non-use of a mark are sometimes granted, the general rule is that a mark must be kept in bona fide use in commerce in order to stay active.

At the time of renewal, non-residents of the U.S. must designate a domestic U.S. representative, similar to the designation made at the time of filing, to receive legal notices and process in the United States.

Timely renewal is very important. While there is a short grace period for renewal, renewals made after the grace period are not accepted and the mark will be deemed abandoned.