In this ‘Intellectual Property Application Series,’ I’ll be discussing federally registered trademarks and the proper way to use the marks in order to maintain the legal rights federal registration provides. I’ll explain what a trademark is, what federal trademark registration involves, and what to know about proper usage to maintain a federal trademark registration. This and more will help explain why federal trademarks are an important tool, which protects both businesses and consumers.
A trademark is a type of intellectual property that uniquely distinguishes and identifies the source of a good. Trademarks assert an owner’s right to use a specific word, phrase, logo/symbol, design, or a combination thereof, in the market. Importantly, trademarks also convey an indication of the uniform quality expected of the goods/services it identifies. This is also known as the “good will” of the trademark. In general, trademarks are secured by a company to advertise and distinguish their products from those offered by other companies.
The word “trademark” is generally used as an umbrella term to include both trademarks and service marks. More specifically, trademarks protect those marks that indicate the source of a good, rather than the source of a service. The protections provided, under either a trademark or service mark, vary slightly. This is because they are specific to the classes of goods/services they protect.
The word “trademark” is also generally used as an umbrella term to include both commonly protected and formally protected trademarks/service marks. The protections provided by a trademark, and the obligations to maintain those protections, vary based on the type of trademark rights governing the mark.
Common Law Trademarks:
Common law trademark rights can be claimed as soon as a mark is officially used in commerce, to market a product/service. There is no formal application or review process to obtain common law trademark/service mark rights. Instead, the first individual to use a mark in commerce is awarded the common law rights to the mark. Appropriately, since common law rights are the easiest to claim, but provide the most limited of the trademark protections available and can be difficult to enforce. In contrast, federal and state trademark registrations provide a verifiable public record of the mark and its use in commerce.
State Registered Trademarks:
To obtain registration in a specific state, an official Application for Registration of a Trademark or Service Mark, must be submitted to the relevant state trademark office, generally a Secretary of State’s Office. The application must meet the filing requirements of the state trademark office and strict filing procedures must be followed. These requirements and procedures vary based on the state trademark office in question. The trademark itself must meet the statutory requirements for registrations, governed by the Secretary of State’s Office with which registration is sought.
For example, to qualify for state registration and protection, the mark must be in current use in commerce. Unlike federal registrations, no option is provided for filing an application with only an intention to use the mark. To demonstrate current use of a trademark, the Secretary of State’s Office requires the submission of formal specimens with examples of the mark in use. An individual specimen is required for each class of goods claimed in the Application for Registration.
Federally Registered Trademarks:
A trademark can be formally registered federally to obtain protections provided under U.S. federal trademark laws. To obtain federal registration, an official Application for Federal Registration of a Trademark is filed with the United States Patent and Trademark Office (USPTO). The application must meet the USPTO’s requirements and strict filing procedures must be followed.
The mark itself must also meet the USPTO’s statutory requirements for registration. The Trademarks Division of the USPTO cannot provide legal advice to customers. It is recommended that you consult an attorney for assistance completing applications for federal registration. After a period of trademark examination and successful prosecution, the USPTO will issue a Federal Trademark Registration Certificate.
Only marks in current use in interstate commerce can be granted federal registration and protection. If a mark is not currently being used to market products/services, but there is a true intention to do so, the USPTO does provide the option of filing an intent-to-use based application. This option allows for an earlier application filing date and potential priority over competing marks, which could be crucial in a legal conflict over the trademark.
Proper use of a trademark in the process of registration would include displaying the mark with the standard trademark symbol, “™”. Until the trademark is formally registered and the USPTO has issued a Registration Certificate, a trademark owner cannot legally use the standard federal trademark registration symbol, “®”.
The USPTO provides further options for protecting a trademark under federal laws, by offering two registration options. If a trademark is in current use, but does not qualify for full federal protection, the USPTO may issue a Federal Registration Certificate under the Supplemental Register. Registration on either the Principal or Supplemental Registers allows a mark protection under federal laws and allows the owner of the mark to use the registration symbol (®) to indicate this protection. This symbol gives constructive notice to the public that the mark is in use. It also discourages others from infringing the mark. If infringement is found, the registrant has the right to bring suit in federal court.
Protections provided solely under the Principal Trademark Register include the presumption of ownership in the entire U.S. This ownership includes the exclusive right to use the mark nationwide in connection with the goods/services listed in the trademark registration. To the extent that a trademark is related to goods, the Principal register grants the right to request U.S. Customs officials to bar importation of infringing trademarked goods.
Owner Responsibilities and Obligations to Maintain Trademark Rights:
Proper use of a trademark preserves the rights provided under the Lanham Act and the opportunity to file suit. A federal trademark registration comes with responsibilities and obligations for the trademark owner, in order to maintain those rights. If the trademark is not properly monitored and protected by an owner, the rights to the mark can be put at risk or lost completely.
Market Surveillance and Trademark Enforcement:
Owners of trademarks, whether registered or unregistered, should conduct routine market surveillance to ensure that others are not using, misusing or damaging the mark. Market surveillance includes, for example, routinely searching the marketplace for generic use of the mark and counterfeit goods.
Routine market surveillance is a good proactive step for protecting trademark rights. There are search firms which specialize in trademark monitoring and report any confusingly similar or identical marks they find. Once informed of an alleged infringement, the owner of the trademark could possibly send a cease and desist letter to assert their rights. Should initial efforts to stop infringement not succeed, a federal trademark owner can file suit in federal court.
Surveillance for a trademark’s use in the public market could help detect potentially damaging use of a trademark. Generic use of a trademark weakens and damages the mark over time. If the general public begins using and associating a trademark as indicating the goods themselves, rather than the source of the goods, the trademark becomes generic. Once a trademark is deemed generic, it can no longer be federally registered or protected under federal trademark laws. Early indications of public generic use of a trademark could provide the advantage needed to curb any trends towards misuse.
For example, the word “aspirin” originally indicated a trademark for the pain killer marketed by a certain company. However, through generic usage of the word, among other reasons, “aspirin” passed into the public domain and can no longer be used as a trademark in the United States. Early indications of public generic use of a trademark could provide the advantage needed to curb any trends towards misuse.
Surveillance for the trademark’s use in the public market could also help detect fraudulent use. Most are aware that there are fraudulent companies that use an established company’s branding to sell cheap knock-off products. However, the damage and potential dangers caused by counterfeiting may not be as well known. To raise awareness, the USPTO is working with the National Crime Prevention Council in their Anti-Counterfeiting Campaign (https://www.uspto.gov/trademarks/anti-counterfeiting-campaign)
Generally, fraudulent misuse of a trademark is damaging to the goodwill it represents and can weaken the mark. If the owner of a federal trademark registrations believes that another party is using their trademark to market counterfeit goods, legal action can be taken to stop the infringement. Depending on the specifics of the case, this action could include filing a civil suit against the infringer in state court (for unregistered trademark) or federal court (for registered trademark).
Further efforts to guard your mark could include monitoring the USPTO’s publication of new marks for opposition. Such monitoring can be conducted with automatic, software-enabled alerts. Thrive IP® can assist in setting up any market surveillance or USPTO-monitoring programs.
The USPTO makes a public publication of each potential trademark during the examination and prosecution stage of the registration process. This publication stage lasts for 30-days and gives the public the opportunity to file a formal notice with the USPTO, opposing the registration of the potential trademark. In order to properly protect the rights to a federally registered trademark, the owner of the trademark should take action to enforce those rights.
To the extent your registration is applicable to a trademark related to goods, you may also record your mark with the U.S. Customs and Border Protection (CBP), a bureau of the Department of Homeland Security. The CBP will watch imported goods for counterfeits illegally using your mark. Recording your mark with the CBP requires a government fee for each class of goods listed in the registration.
Proper Display of Federally Registered Trademarks:
To protect and maintain the rights provided under federal registration, the registered mark and its use must be properly managed by the trademark owner. This would include ensuring the proper display of the trademark to assert the associated trademark rights to the public.
A federally registered trademark must be displayed and used in accordance with the rules governing trademarks. When displaying a trademark in type, it should be followed by the appropriate symbol ((R) for a federally registered trademark, TM for an unregistered Trademark and SM for an unregistered service mark).
Federal registration with the USPTO allows a mark protection under federal laws. The owner of the mark is given the right to use the federal registration symbol (®) to indicate this protection. The federal registration symbol must only be used after a federal Certificate of Registration has been issued. Inappropriate use of the federal registration symbol is a violation of federal law. As such, if the federal registration symbol is used while the federal application for the mark is still pending, it could be grounds for refusing to register the mark.
The registration symbol also gives constructive notice to the public that the mark is in use and federally protected. In doing this, the symbol asserts the trademark rights and discourages others from infringing the mark. If alleged infringement is found, the owner of a federal trademark has the right to bring suit in federal court.
When the trademark is referred to in speech, the common name of the product or the word “brand” should be included. This is to proactively prevent the public use of a trademark, in place of the common name, to describe a product it advertises. Similarly, the use of a trademark as a noun or a verb can have dire consequences, as was the case for the once registered Jacuzzi and Google marks. Use of a trademark as a noun leads to confusion between the trade name and the business name and weakens the mark.
The main distinction is, trademarks must be presented and used as proper adjectives. As discussed previously, if the public begins using and associating a trademark as indicating the goods themselves, rather than the source of the goods, this is generic use of a trademark. Once a trademark is considered generic, it can no longer be federally registered or protected under federal trademark laws.
Managing Use of Federally Registered Trademark:
To protect and maintain the rights provided under federal registration, the use of the registered mark must also be properly managed. Among other things, proper management of a trademark would include ensuring the registered mark is used in connection with the goods listed in the federal trademark Registration Certificate. Proper use is also necessary to formally maintain the trademark through the required renewal procedures.
When an application to federally register a trademark is filed with the USPTO, the application includes a description of the potential trademark and an indication of the goods the owner wishes to offer under that mark. The USPTO has categorized the list of potential goods which can be claimed by a potential trademark, into numbered classes. The class descriptions include 34 goods categories and 11 services categories, making a total of 45 different classes. Identifying trademarks by class helps to distinguish confusingly similar marks that are used to provide different classes of goods/services, among other things.
Classes identify a trademark’s use in commerce. Specifically, the use of a mark identifies it and the mark’s class identifies its use. Each class is simply a broad description of how the use of a mark is intended. A literal description of the mark and its use(s) are also required and must be more limited than the broad class identification.
Once a trademark passes the examination and prosecution phase, the USPTO issues a formal Registration Certificate. This certificate certifies that the trademark is registered in relation to the classes of goods listed on the certificate. To maintain the rights offered by the federal registration of a trademark, the mark must be used in relation to the specific class(es) represented on the official Registration Certificate.
A third party may file a request for cancellation of a registered trademark if the trademark has not been used in relation to the registered goods as in the last five years. Accordingly, a trademark owner must also ensure that a federally registered trademark is in use for the registered goods as detailed on the federal Registration Certificate, so that it does not become vulnerable to cancellation due to non-use.
Proof of Use in Commerce to Prepare for Trademark Renewal
Proof of the continued use of a trademark is also a necessity to maintain federal protections. In order to maintain a federal trademark registration on the Principal Register of the U.S. Patent and Trademark Office, it is necessary to file a Section 8 Declaration between the fifth-sixth years from the date of registration. Section 8 of the Trademark Laws requires a showing of continued use of a mark by the owner of the registration, for each of the classes claimed on the Registration Certificate.
An optional Section 15 Affidavit of Incontestability may be filed only after a mark has been in continuous use in commerce for at least five consecutive years, subsequent to the date of registration. A Section 15 Affidavit may be filed within one year following a 5-year period of continuous use of a mark in commerce. No additional grace period is given. For both the Section 8 Declaration and optional Section 15 Affidavit, formal specimens with examples of the continued use of a mark in connection with the classes identified in the registration, are required.
Further maintenance is required to extend the trademark protections past the initial 10-year trademark term. Between every 9th and 10th year period, calculated from the trademark registration date, a Declaration of Continued Use Under Section 8 and an Application for Renewal under Section 9 must be filed. Again, this renewal must be accompanied by a specimen of the mark as used in commerce, for each class claimed at the time of registration.
Trademark License – Maintaining Proper Use:
In addition to their ability to advertise and distinguish a company’s products from another, trademarks also convey a company’s “goodwill.” The goodwill a trademark conveys is an indication of the uniform quality expected of the goods identified by the trademark. To preserve the strength of a trademark and its rights, the mark should be protected from being used in association with inferior, low-quality products/services.
When leasing a trademark, it is important to explicitly state liability obligations and establish the responsibilities of leasing the trademark. In a trademark license agreement, the owner is expected to control the quality of the goods, as well as the appearance of the licensed trademark.
Trademark owners are obligated to ensure license provisions are adhered to. To enable this, a licensor has permission to monitor the licensee’s use of the mark. These proactive measures are an important step in protecting a mark and the goodwill associated with it, so that it does not become susceptible to losing the rights it protects. If it is believed that a trademark licensee is not abiding by the terms of the trademark license, the trademark owner has the right to take action to protect their mark. Not acting to in order to maintain the rights to protect that mark.
Federally Registered Trademark – An Important Intellectual Property Tool:
Federal trademarks are important in their ability to protect businesses and consumers alike. They provide a business owner the legal backing to protect their identity, reputation, and the goodwill associated with a company and its trademarks. While common law and state trademark rights provide important, but limited protection, the strongest protection for a trademark is provided through federal registration.
The rules that govern trademarks enable businesses to compete efficiently and fairly. Government trademark rules establish a standardized system for businesses competing in the market. Government guidelines for addressing trademark disputes are also integral to the success of the trademark system.
In addition, the laws governing trademarks help protect consumers from deceit by counterfeit or by fraudulent companies. Trademarks do this by signifying the goodwill and identity of a company. Consumers depend on trademarks conveying the goodwill of a company, as this establishes an expected level of quality and/or trust. The proper use of the federal trademark symbol ((TM) for unregistered marks and (®) for federally registered marks) is the best way to communicate to consumers that a legitimate trademark is in use and protected. If businesses could not prove and protect their reputation via trademarks, it could be consumers that pay the greatest price.
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. Thrive IP® patent attorneys are located in Charleston, SC; Greenville, SC; and Knoxville, TN; Alexandria, VA and Smithfield, VA. Please contact us if you have an interest in filing a federal trademark application or other intellectual property services.