Establishing Trademark Rights

Trademark rights arise from use of a Mark. However, a trademark owner may extend the trademark right in the United States by filing a Federal application to register the Mark at the U.S. Patent and Trademark Office (PTO).

Federal registration is not required to establish rights in a Mark, nor is registration required to begin use of a Mark. However, Federal registration will "perfect" the trademark right by securing benefits beyond the rights acquired by merely using a mark. For example, a Federal registrant is presumed to be the owner of the Mark for the goods or services specified in the registration, and for "related" goods and services. The owner also has, upon filing, "constructively" used the Mark nationwide even if goods and services have not been sold or offered nationwide.

There are two related but distinct types of rights in a Mark: the right to prevent others from using confusingly similar Marks and the right to register the Mark.

Rights to use a Mark depend on who used which Mark, where geographically, and when. Such factors make determination of trademark rights complicated. This is particularly true when two have begun use of the same or similar Marks without knowledge of one another. Only a court can render a decision about the right to use, and award relief such as injunction or damages. However, Federal registration can provide significant advantages to a party involved in a court proceeding.

Generally, the first to use a mark has the ultimate right to register that Mark. The PTO's authority is limited to determining the right to register. The PTO's position is that it cannot provide advice concerning rights in a Mark.

Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the Mark to identify its goods or services. A trademark owner should maintain evidence of use to establish priority in the event of conflict, and add to that evidence from time to time to support its claim of continued use. This is particularly important for unregistered Marks.

The term of a U.S. 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 will be canceled. If the Mark has not been used, it may have been abandoned, and the Federal Registration of the Mark is then subject to cancellation.

Filing Basis in Applications for Federal Registration

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 an application based on that use (a "use" application). In obtaining Federal registration, "commerce" means all commercial activity which may lawfully be regulated by the U.S. Congress (for example, commerce between residents of different states, or commerce between one in the U.S. and one in another country).

   The use in commerce must also be a use in the ordinary course of trade, and not use merely to reserve a right in a Mark. For goods, "use" means the sale of product in the normal course of business. For services, "use" means the promotion of the service with the ability to provide the service at the time of the promotion. Use of a Mark in promotion or advertising of product (goods) before the product is actually provided does not qualify as use in commerce sufficient for registration, nor does use of a mark in purely local commerce within a state (however commerce which does not "affect" interstate commerce is rare).

2. An applicant who has not yet used the Mark may file an application based on a bona fide intention to use the mark in commerce (an "intent-to-use" application). If an applicant files based on a bona fide intention to use in commerce, the applicant must use the Mark in commerce and submit an allegation of use to the PTO before the PTO will register the Mark.

3. An applicant who has filed an application for, or registered, a Mark outside the United States may file in the United States based on such application or registration under certain international agreements.

Who May File an Application

A Federal application must be filed in the name of the owner of the Mark, usually an individual, corporation or partnership. The owner of a Mark is the individual or entity who 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 it may be represented by an attorney. However, applicants not living in the United States must designate in writing the name and address of a "domestic representative" -- a law office 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 representative, at the address indicated, is appointed as the applicant's domestic representative under 1(e) of the Trademark Act. The designated representative will then receive all communications from the PTO related to the application, and the owner will be deemed notified by such communication.

Laws & Rules Governing U.S. Federal Registration

The Federal registration of trademarks in the U.S. is governed by the Trademark Act of 1946, as amended, 15 U.S.C. 1051 et seq.; the Trademark Rules, 37 C.F.R. Part 2; and the Trademark Manual of Examining Procedure (2d ed. 1993).

Other Types of Applications

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. These types of Marks are relatively rare, and their registration has special requirements.

Use of the "TM," "SM" and "®" 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 user's claim of exclusive right, regardless of registration. Such marking may or may not have legal effect. The registration symbol, ®, may only be used when the Mark is registered at the PTO. All marking must be omitted from the drawing submited with an application, as marking is not considered part of the Mark to be registered.

International Extension of Trademark Right

A United States registration provides rights under U.S. law only in the United States and its territories. If the owner of a Mark wishes to secure that Mark in other countries, the owner must satisfy the laws of each country in which rights are desired.

While the U.S. has signed the Paris Convention, thereby providing "national treatment" and a limited priority right in other countries, it has not signed (but is considering) theMadrid Agreement . U.S. applicants therefore may not file one application covering the countries of the Madrid Agreement, but must instead register country-by-country with few exceptions. For further information on registration outside the U.S., see International agreements.