Establishing Trademark Rights


Registration Process

International Protection

Who Can File?

Trademark Searches

Other Types of Marks


Summary - A trademark is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.

Establishing Trademark Rights - Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress.

Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.

There are two related but distinct types of rights in a mark:

  1. the right to register, and
  2. the right to use.

Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register.

The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration.

Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding.

The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.

Duration - Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.

Registration Process - An applicant may apply for federal registration in three principal ways.

  1. An applicant who has already commenced using a mark in commerce may file based on that use (a "use" application).
  2. An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application).

    For the purpose of obtaining federal registration, "commerce" means all commerce which may lawfully be regulated by the U.S. Congress, for example, interstate commerce or commerce between the U.S. and another country

    The use in commerce must be a bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark.

    Use of a mark in promotion or advertising before the product or service is actually provided under the mark on a normal commercial scale does not qualify as use in commerce.

    Use of a mark in purely local commerce within a state does not qualify as "use in commerce."

    If an applicant files based on a bona fide intention to use in commerce, the applicant will have to use the mark in commerce and submit an allegation of use to the PTO before the PTO will register the mark.

  3. Additionally, under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.

International Protection - A United States trademark registration provides protection only in the United States and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws. Although the USPTO cannot provide information or advice concerning trademark protection in other countries, interested parties may inquire directly in the relevant country or its U.S. offices or through an attorney.

Who Can File? - An application for trademark registration must be filed in the name of the owner of the mark; usually an individual, corporation or partnership. The owner of a mark controls the nature and quality of the goods or services identified by the mark. The owner may submit and prosecute its own application for registration, or may be represented by an attorney.

Applicants not living in the United States must designate in writing the name and address of a domestic representative -- a person residing in the United States "upon whom notices of process may be served for proceedings affecting the mark." The applicant may do so by submitting a statement that the named person at the address indicated is appointed as the applicant's domestic representative under 1(e) of the Trademark Act. The applicant must sign this statement. This person will receive all communications from the PTO unless the applicant is represented by an attorney in the United States.

Trademark Searches - An applicant is not required to conduct a search for conflicting marks prior to applying with the PTO. Still, some people find it useful.

In evaluating an application, an examining attorney conducts a search and notifies the applicant if a conflicting mark is found. The application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the mark cannot be registered.

To determine whether there is a conflict between two marks, the USPTO determines whether there would be likelihood of confusion, that is, whether relevant consumers would be likely to associate the goods or services of one party with those of the other party as a result of the use of the marks at issue by both parties. The principal factors to be considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks.

To find a conflict, the marks need not be identical, and the goods and services do not have to be the same.

The PTO does not conduct searches for the public to determine if a conflicting mark is registered, or is the subject of a pending application, except as noted above when acting on an application. However, there are a variety of ways to get this same type of information.

  1. First, by performing a search in the PTO public search library in Arlington, Virginia.
  2. Second, by visiting a patent and trademark depository library. These libraries have CD-ROMS containing the trademark database of registered and pending marks.
  3. Finally, either a private trademark search company, or an attorney who deals with trademark law, can provide trademark registration information. The PTO cannot provide advice about possible conflicts between marks.

Other Types of Marks - In addition to trademarks and service marks, the Trademark Act provides for federal registration of other types of marks, such as certification marks, collective trademarks and service marks, and collective membership marks.

Marking - Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid.

The registration symbol, , may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues.