Trademarks are text, designs or expressions used identify a source of origin of goods or products. Service marks employ such identifiers for services.
In the United States, rights in trademarks and service marks can be obtained by use alone (common law rights) or by registration. Such rights may be subject to those of prior users as determined by federal and state law, and by decisions of federal and state courts.
The right to use and register a trademark or service mark depends on whether there is a “likelihood of confusion” with a preexisting mark, whether registered or not. There are a number of factors that are used to determine whether marks are confusingly similar, including the similarity of the marks, the strength of the mark, the similarity of the goods and services, and other factors.
The right to use and register a trademark or service mark also depends on whether it “dilutes” the distinctive qualities of a famous trademark, service mark or business name. Dilution can occur even though the goods or services are in unrelated markets (e.g. KODAK for shoes or BUICK for real estate services).
If a new trademark or service mark is to be used, a full trademark search may be made to determine whether the mark is clear for use, and whether it is registrable.
The full U.S. trademark search report, rendered to us by our outside database associate, provides a basis for business decisions before adopting a trademark or service mark. These searches attempt to identify the most pertinent marks that are the same as, or phonetically similar to, the mark in question, taking into account the similarity of the goods and services. Using these search reports, the trademark attorney applies the factors established by the relevant trademark law to determine if there is any likelihood of confusion with the reported marks, either registered or common law, and whether the mark in question is clear for use. However, because of limitations inherent in any database, the searches cannot locate all relevant prior rights or provide an absolute guarantee that a trademark or service mark can be adopted for the relevant business activity in the U.S.
Some trademark, service mark, and business name owners police their trademarks, service marks, and business names aggressively while other owners elect to challenge only new uses that they perceive to be in more direct conflict with their rights. Thus, a challenge may later arise in connection with use and adoption of a particular mark even though the trademark attorney does not believe the challenge to be meritorious.
Registration of trade and service marks
In the U.S. Patent and Trademark Office, an application for registration of a trademark or service mark may be made based on actual use in commerce between the states or with a foreign country (also known as use “in commerce”), or based on a bona fide intention to use the mark in commerce within a reasonable time at a later date. However, before a trademark registration can be issued and granted on such an intention-to-use filing, actual use in commerce must be made.
If a U.S. trademark application is eventually granted, the rights in the registration will be determined as of the original filing date of the application.
Trademark applications are subject to examination by a trademark examining attorney in the U.S. Patent and Trademark Office. The examining attorney reviews the mark and the goods or services for compliance with the laws governing registration, including whether there is a likelihood of confusion with a prior registered mark. If there is an objection or rejection of the application, there is an opportunity to amend and/or argue against the objection or rejection.
If the application is allowed by the examining attorney, it will be published by the U.S. Patent and Trademark Office. Entities who believe that they will be damaged by registration of the mark may file an opposition to the application, or a cancellation of the registration if it is issued. An opposition or cancellation action may be based on either a prior registered or common law mark.
Once a registration is issued on the Principal Register, it establishes prima facie rights in the trademark or service mark. Registrations are subject to periodic renewals and other filings to confirm use. If continuously used, a trademark or service mark registration may be renewed indefinitely.
Foreign trademark filing
DeLio, Peterson & Curcio work closely with foreign associates throughout the world to secure trademark rights outside the United States for its clients with international IP portfolios. Corresponding trade and service mark applications may be filed in foreign countries or in the European Economic Community at any time. Such applications should be filed within six (6) months of the United States application in order to obtain the benefit of the filing date in the U.S. Patent and Trademark Office.
The European Community Trademark (CTM) Law, which is in effect, allows one to file a single CTM application covering up to three (3) classes.
It is also possible to file an International Trademark application under the Madrid Protocol, which can extend coverage to any one of over eighty countries.
Some foreign countries recognize common law rights of unregistered trademark users, but in most instances a registration is required to obtain rights in the trademark or service mark.