Trademark Registration

Basis of Trademark Rights

Unlike patent and copyright protection, trademark protection has no direct constitutional basis, rather rights originate from common law use. Trademarks are federally regulated by the Lanham Act (as amended) under the Commerce Clause as interstate commerce. However, the Lanham Act does not, in general, grant federal trademark rights, rather it provides a federal registration system for common law and state trademarks.

Under the Lanham Act, federally registered marks serve both as an identification of the source of the goods, but also as a marketing tool to prevent others from using similarly confusing marks.

Federal trademark registration upon the Principle Register affords the registrant several advantages:

® Legal presumption of trademark ownership and the validity of the trademark and its registration.

® Prima facia evidence of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration.

® Incontestability of right to use mark under certain conditions: The right of the registrant to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable.

® Provides constructive notice to subsequent users and overcomes any claims of good faith use, e.g. that the infringer did not know of the registration.

® National trademark database.

® Confers upon the applicant a nationwide right of priority as of the application date.

® May register the mark with the US Customs & Border protection to prevent imported infringing goods or with those with counterfeit marks.

® Allows for federal jurisdiction and the use of federal courts without meeting diversity or federal question requirements.

® Federal registration may be used as a basis for a foreign trademark filing.

® Able to use federal registration symbol ®.

® Prohibits the deceptive marketing of goods and services that cause injury to other competitors.

® When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 43(a) or (d), or a willful violation under section 43(c), shall have been established in any civil action arising under this Act, the plaintiff shall be entitled to;

  • injunctive relief
  • recover defendant’s profits,
  • recover any damages sustained by the plaintiff, and
  • recover the costs of the action including attorney’s fees in exceptional cases.

There is the possibility of receiving triple damages in certain cases. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount.

Registration Process

The procedural process of obtaining a trademark registration upon the Principle Register may be categorized as follows:

1. Filing Basis

An application for registration must be filed with the USPTO under one of the following basis for registration;

a. Use in Commerce. 

Registration is based on actual use of the mark in commerce on or in connection with the goods or services designated in the application. Application must include;

  1. a verified statement that the mark is in use in commerce on or in connection with the goods or services designated in the application.
  2. date of first use.
  3.  a sample of the mark as used in commerce.

Use in commerce includes any commerce that Congress may regulate; interstate commerce and commerce between the US and a foreign country or a US territory.

The use must be a bona fide commercial use of the mark in the ongoing course of business. The mark must have been used in connection with a bona fide sale or transportation of the goods or services, and the sale or transportation must amount to something more than merely a token use.

b. Intent to Use. 

Application for registration is based on constructive use and must include;

  1. a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services designated in the application as of the application date.
  2. must ultimately show actual use in commerce.

The intent to use must be based in real substantial plans to use the mark for the class of goods or services represented in the application. A mere desire to use the mark will not support an Intent to Use application.

Filing a trademark application under an intent to use basis will increase the total filing fees for the registration. This is due possibly by filing a request for a six-month extension of time for filing a Statement of Use ($150 per class), and certainly by the filing of the Amendment for Allege Use ($100 per class) and the Statement of Use ($100 per class) that will be required once the mark is used in commerce. A mark in an application based on intent to use may not be registered on the Principle Register until proof of the use of the mark in commerce has been submitted and the additional fees paid.

c. Foreign Registration.

Under the Paris Convention[1], a foreign national of a Paris Convention member country may acquire a US trademark registration based solely on the existence of a foreign filed registration, provided the mark otherwise meets the US eligibility requirements. An application based on a foreign filed registration requires;

  1. a copy of the applicant’s foreign registration, and
  2. a verified statement that the applicant had a bona fide intent to use the mark in commerce as of the date of filing the application (applicants are not required to state actual use where the application is based on a foreign registration).

d. Foreign Application.

In general between Paris Convention member countries, an application for registration in a home country may be given a foreign application priority date provided the home country application was filed within six months of the foreign application. An application claiming a foreign priority date must include;

  1. identifying information regarding the applicant’s foreign application, and
  2. a verified statement that the applicant had a bona fide intent to use the mark in commerce as of the date of filing the application (applicants are not required to state actual use where the application is based on a foreign application).

Applicant must still establish a basis for registration before the application will be published.

e. International Registration.

The Protocol Relating to the International Registration of Marks, the Madrid Protocol, is a union of member states wherein the owner of a trademark in a member country may submit a single application for an international registration and seek protection for the mark in designated countries within the union. An owner may apply for an international registration with the home country intellectual property office (IPO) and use the international application as a basis for an extension of protection to the designated states. Under the Protocol, an international application may be based on either a registration with the IPO of origin (basic registration) or on an application for registration filed with that IPO (basic application). The international application may relate only to goods and services covered by the basic application or registration.

International trademark registrations are administered by International Bureau of the World Intellectual Property Office (WIPO). Upon receipt of the international application, the International Bureau checks that all the filing requirements are met and that the goods and services are correctly classified. If so, the trademark is recorded in the International Register. The International Bureau then provides notice of the international registration to the IPOs of the designated countries. The International Bureau does not examine whether the trademark as such qualifies for protection, or whether an identical or similar trademark has already been registered; that is a matter for the IPOs of the designated countries.

The request for extension of protection is forwarded by the International Bureau to the IPO of the designated state or states, where the application is then reviewed as with any domestic application. The IPO of a designated country has the right to refuse protection of a mark in the territory of that country. Refusal may be made on any of the grounds on which an application for registration filed directly with that IPO might be refused. Notification of the refusal is sent to the International Bureau and recorded in the International Register.

2. Examination 

Roughly 4-6 months after filing the trademark application, a USPTO trademark examining attorney will be assigned to review the application. The official review typically takes a few weeks with the examining attorney either approving the application for publication, or issuing an Office Action letter stating the examining attorney’s objections or the reasons the application has otherwise failed. If the application is approved for publication, a notice of publication will be issued within eight weeks of approval with publication following within 30 days.  If an Office Action is issued, the applicant will have six months (non-extendable) to fully respond to the examining attorney’s objections. If the applicant is successful at overcoming the examining attorney’s objections, the application will be approved for publication as above. Otherwise, a refusal to register will be issued and the applicant will have six months to correct the application to the satisfaction of the examining attorney, or convince the examining attorney to withdraw the refusal.

The USPTO provides an excellent breakdown of the process and timelines for each of the five filling basis:

  1. Section 1(a) Timeline:    Application based on use in commerce.
  2. Section 1(b) Timeline:    Application based on intent to use.
  3. Section 44(d) Timeline: Application based on a foreign application.
  4. Section 44(e) Timeline: Application based on a foreign registration.
  5. Section 66(a) Timeline: Application based on the Madrid Protocol.

3. Renewal of Trademark Registration

A trademark registered upon the Principle Register remains in force for ten years but is renewable indefinitely provided the registrant has filed, within five years of registration, a Section 8 Affidavit of Continued Use, and timely files a renewal application and pays the renewal fees.

[1]Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised.