Overview: Trademark Law

In the United States, under the territoriality doctrine, a trademark is recognized as having a separate existence in each sovereign territory in which it is registered or legally recognized as a mark. The basic rule of trademark ownership in the United States is priority of use. A Trademark can be protected through Common Law or through state and/or federal registration. Common law is the default. All common law and federal/state registration rights are built upon the foundation of first-in-time, first-in-right.

Priority of trademark rights in the United States depends solely upon priority of use in the United States, not on priority of use anywhere in the world. Prior use in a foreign nation does not establish priority of use in America. Thus, shipments and sales between foreign nations do not establish trademark rights in the United States. Prior use of a trademark in a foreign country does not entitle its owner to claim exclusive trademark rights in the United States as against one who used a similar trademark in the U.S. prior to entry of the foreigner into the domestic American market. Under Section 43 of the Lanham Act, an owner of a mark (whether registered or common law protected) may bring an action for trademark infringement.

To prove trademark infringement, a plaintiff must show that: (1) the mark is valid and legally protectable; (2) the mark is owned by the plaintiff; and (3) the defendant's use of the mark to identify goods or services is likely to create confusion concerning the origin of the goods or services. If you need help or have questions about a trademark issue it is recommended you contact an experienced attorney at The Law For All today.

What’s Required for Trademark Protection?

The United States has a two-tiered system of trademark protection: federal and state. A federal registration, under the Lanham Act, gives the registrant rights throughout the entire United States and its territories; a state registration gives the registrant trademark rights only within the territory of that particular state and Common law receives protection in the area(s) where the mark is used in commerce. The trademark rights and protection afforded by each state differ slightly; however, most States have some version of the Model State Trademark Bill, which mirrors federal trademark law. Consult a local trademark attorney for more information.

A federal trademark registration is issued by the United States Patent and Trademark Office. A state trademark registration is issued by a state office, typically the Secretary of State’s office (e.g., the State of Florida Secretary of State’s Office or the New York Department of State’s Office). Contact The Law for All to have an experienced attorney help you with the trademark process. Regardless of whether you seek state or federal trademark law protection, in order to create trademark rights, a designation must be proven to perform the job of identification: to identify one source and distinguish it from other sources. The way to obtain rights in a business symbol is to actually use it as a mark.

A federal trademark registration is available only for marks used in interstate commerce or commerce between the United States and another country. 15 U.S.C. §1127. One may also apply for federal registration before actual use of the mark, based on intent to use. 15 U.S.C. § 1051. It is possible to apply to register rights in trademarks and service marks on an intent to use basis (e.g., while the product is still in the planning stage and has not been commercially used), thereby establishing a priority in the right to use the mark (assuming it is ultimately used and becomes registered) as of the date the application is filed. In contrast, a state registration is available for marks used purely in intrastate commerce—that is, within only one state. Only some states will permit applications based on intent to use or on the reservation of a mark. One may file for both federal and state trademark registration if the mark is used within the state as well as in interstate commerce or commerce between the United States and another country.

A federal registration provides a presumption of the validity of the ownership by the entity or person identified in the registration records. 15 U.S.C. § 1057. Subject to certain exceptions, federal registration gives a national right of priority as of the filing date of the application for the goods or services specified in the application. 15 U.S.C. § 1057(c). However, State registration provides rights and/or protection solely within the particular state of intrastate commerce. Further, only federal registration grants the right to use the distinctive ® symbol with the registered mark. 15 U.S.C. §1111.

A trademark is any word, name, symbol, or device, or any combination thereof, adopted by a manufacturer or merchant to identify her goods and to distinguish them from goods produced by others. 15 U.S.C. §1127 (1988). In general, they are used on or in association with goods and/or services. The public learns, through purchasing, that the goods or services bearing a mark come from a single (but possibly anonymous) source which meets its expectation of a standard of quality. The same word may be used as a trademark, a service mark and/or a trade name.

Trademarks are evaluated on a spectrum of generic words (like soda are not protectable) through descriptive terms (like SHARP for TVs is protectable upon showing secondary meaning), suggestive marks (like AIRBUS), arbitrary marks (like Apple), fanciful marks (like XEROX) to coined terms. The type of mark determines the mark's strength. However, the Lanham Act protects unregistered marks, known as trade dress. Trade dress protects a product's packaging, or configuration, the total image of a product, which may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques. Trade dress protection is found under §43(a) of the Lanham Act, which protects all unregistered marks including common law marks.

A major restriction on what can count as a trademark is whether or not the symbol is used in everyday language. In this respect, owners of trademarks do not want their symbols to become too widely used because once this occurs, the trademark lapses. An example of this restriction eliminating a word from trademark protection is “aspirin”—as the word became a part of the common culture, rights to exclusively use the trademark lapsed.

Ownership of a trademark confers upon the property holder the right to use a particular mark or symbol and the right to exclude others from using the same (or similar) mark or symbol. The duration of these rights is limited only in cases where the mark or symbol ceases to represent a company or interest, or becomes entrenched as part of the common language or culture.

Factors to Consider: Benefits of Federal Trademark Protection

Factors to Consider: Benefits of Federal Trademark Protection

(1) Marks can be used to force someone to stop using a name, logo or packaging style which is likely to confuse prospective customers as to the source of goods or services or which will dilute the distinctiveness of your mark. 15 U.S.C. §1114

(2) Trademarks have unlimited duration. Federal registrations and renewals issued prior to November 16, 1989, are in force for twenty year periods; on and after that date, federal registrations and renewals are issued for ten year periods. However, the applicant is able to renew at the end of each period, allowing for indefinite duration. 15 U.S.C. § 1058

(3) Federal registrations and applications to register marks are "constructive notice" of the owner's rights in the mark. 15 U.S.C. §1111. Therefore, treble (triple) damages and attorney's fees may be awarded against infringers, if the case is deemed "exceptional". 15 U.S.C. §1117. It is very important to have a mark screened for availability before spending money on packaging and printed materials.

(4) Permits use of the "Cyberpiracy Prevention Act" if a bad faith intent is found to profit from a mark (or personal name) when registering a domain name.

(5) Registration allows for a reasonable zone of expansion into new products and goods in the foreseeable future.

Factors to Consider: Costs of Federal Trademark Protection

**State and Common Law protection may differ**

(1) Likelihood of confusion and similarity of the marks is a matter of opinion and subject to debate. This debate with the Trademark Office will cost you money. Further, once the trademark is registered it can still be challenge and invalidated within the first 5 years of use. 15 U.S.C. §1065.

(2) It is important to police marks by sending "cease and desist letters" to competitors who infringe them; otherwise exclusive right to use the marks may be lost. Trademarks are only effective if the owner enforces their rights. In order to enforce their rights, owners are financially responsible for self-policing their marks to prevent infringement. However, since many users tend to ignore trademarks or may not be aware of your mark or use your mark in other countries, it is difficult to detect and stop the improper use.

(3) Applicants must specify a particular class(es) of goods to have the exclusive right to use your mark. It is not universal. This can dramatically increase your filing costs, especially if many of your products are unrelated or in different fields/industries.

Is it worth It?

Overall yes, the number of benefits outweighs the costs associated with trademark protection. Along with the relatively broad protection awarded to trademarks, they have an indefinite duration. As long as you continue to properly use the mark and renew, your trademark can last forever. However, it is important to police and enforce your mark to prevent it from becoming generic. Contact The Law for All today to help you with the trademark process. We offer flat fee service options so legal fees are predictable and you have no surprises on your billing statement.