Trademarks

United States Trademark Registrations

U.S. Trademark rights can be acquired in one of two ways:

  1. Using the mark on or in connection with goods or displaying the mark in the sale or advertising of services, or
  2. Filing a federal intent-to-use trademark application, declaring that the applicant has a “bona fide” intent to utilize a particular mark in connection with designated goods and/or services.

Registration of a mark is not mandatory, and rights will be protected without it. However, there are may advantages to securing a federal trademark registration. Reserving a corporate name in one or more states is irrelevant to trademark rights.

The application process takes about a year. Once issued, a federal registration has substantial advantages in that it:

  • is constructive notice of the registrant’s claim of ownership, applicable nationwide to everyone subsequently adopting marks; will be listed on search reports obtained by others;
  • is evidence, albeit rebutable, of the registrant’s exclusive ownership rights, shifting the burden of proof to anyone challenging those rights, and in some circumstances it can be conclusive evidence of those rights;
  • gives federal courts jurisdiction to hear infringement claims, counterfeiting claims, and related claims of unfair competition under state law;
  • precludes states from requiring modifications in the display of the registered marks;
  • can be used as a basis for registration in some foreign countries; and
  • can be recorded with the U.S. Customs Service to prevent importation of infringing foreign goods.

Use of a trademark registration notice before the mark actually has been registered is not only inappropriate, but may also prevent the owner from obtaining relief against an infringer. The informal symbols TM (for trademarks) or SM (for service marks) are often used with unregistered marks to indicate a claim of common law trademark rights. After registration, one of the following trademark registration notices may be used: “Registered U.S. Patent and Trademark Office,” “Reg. U.S. Pat. & TM Off.” or ®. Such notice is not mandatory, but under some circumstances its use is necessary to obtain damages from an infringer.

A federal trademark registration is maintained by filing a Declaration of Use during the sixth year after its registration, and by Renewal every ten years as long as the mark is still in use in federally regulated commerce. The law provides that non-use of a mark for two consecutive years is ordinarily considered abandonment, and the first subsequent user of the mark can claim exclusive trademark rights.

Foreign Trademark Registrations

Foreign Trademark applications should be filed in each country where it is desired to secure a registration of a particular mark or name. Most foreign countries, like the U.S., follow the International Classification System. Foreign registrations are typically active for a ten to fourteen year term from either the date of application or date of registration, and are renewable.

Most foreign countries will afford Priority to an application if it is filed within six months of a corresponding U.S. application. When claiming priority from a U.S. filing, proof of use in the foreign country is typically not required in order to secure a registration.

A notable exception to the general rule that applications must be filed in each country separately is the European Community. In this instance, it is possible to register a trademark for the EC as a single territory. Members of the EC presently include Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, Netherlands, Portugal, Spain, Sweden and the United Kingdom. The number of countries is expanding to match the scope of the expanding European Union. It is anticipated that eventually most of the Western and Eastern European countries will be part of the European Union.

The registry for community trademarks (CTM) is located in Alicante, Spain and is known as OHIM. CTM applications must designate all fifteen EC countries. Applications are examined as to formalities and can be refused on absolute grounds only (e.g., descriptiveness, non-distinctiveness, protected symbols and so on). An official search is conducted by OHIM and by those member states that wish to do so. Applicants are advised of findings and are then entitled to amend or withdraw applications, but applications can be refused at this stage on the grounds of prior rights.

CTM applications are published for opposition purposes with a three-month opposition period from the date of publication. During this time, prior rights can be asserted, and these prior rights are not limited only to prior national or EC applications/registrations. If an objection is raised to registration of the trademark in any EC country, the CTM application will fail, but it can then be converted to a national application in any or all of the member states without loss of priority. Convention priority can be claimed in the usual way. It is also possible to claim seniority from existing national registrations in member states.

When doing business in three or more EC states, it is cost effective to seek a CTM registration. Renewal is required every ten years and renewal fees are considerably less than those charged by each individual country. Registrations become vulnerable to cancellation after five years of non-use, but “genuine” use in any one country will maintain the validity of registration in all fifteen.

Although not a typically recommended course of action for trademark protection, we are also available to handle filings and prosecution under the Madrid Protocol for clients that either want to pursue protection under the Madrid or already have such protection.

Read about the Madrid Protocol.

Some of Our Trademark Work

European Community Trademark Registrations

Trademarks can be registered in the European Community as a single territory. Members of the EC are Austria, Benelux (Belgium, Netherlands and Luxembourg), Denmark, Finland, France, Germany, Greece, Ireland, Italy, Portugal, Spain, Sweden and the United Kingdom. As the EC grows, so do the rights associated with a European Community Trademark. The registry for community trademarks (CTM) is located in Alicante, Spain and is known as OHIM.

CTM applications must designate all fifteen EC countries. The applications are examined as to formalities and can be refused on absolute grounds only (e.g., descriptiveness, non-distinctiveness, protected symbols and so on). An official search is conducted by OHIM and by those member states who wish to do so. Applicants are advised of findings and are entitled to amend or withdraw applications, but applications are not refused at this stage on the grounds of prior rights.

CTM applications are published for opposition purposes with a three month opposition period from the date of publication. At this time, prior rights can be asserted, and these prior rights are not limited only to prior national or EC applications/registrations.

If an objection is raised to registration of the trademark in any EC country, the CTM application will fail, but it then can be converted to a national application in any or all of the member states without loss of priority. Convention priority can be claimed in the usual way. It is also possible to claim seniority from existing national registrations in member states.

If the applicant is doing business in three or more EC states, it is cost effective to seek a CTM registration. Moreover, renewal fees for a CTM registration are considerably less than renewal fees charged by each individual country.

Renewal is required every ten years. Registrations become vulnerable to cancellation after five years of nonuse, but “genuine” use in  any one country will maintain the validity of registration in all fifteen.