What exactly are trademarks? How do they function? And what does having one imply? Is there any advantage to having a US trademark? Find out right here!
A trademark is a distinctive sign used by an individual or company to identify its goods and services. It helps consumers distinguish between similar products and services. Companies must register them with the United States Patent and Trademark Office or US trademarks to protect a trademark. Once registered, trademarks have certain legal rights and protections. The United States Patent and Trademark Office issues federal trademark registrations that cover the entire country (USPTO). In a nutshell, this article explains the system. If certain conditions are met, it is also possible to apply for registration of a mark in the United States via the Madrid Protocol (International Registration) system. Trademark Basics in the U.S.
State Trademarks
Each state in the US has its own trademark legislation and grants registrations covering just its own state. In general, these are mainly of relevance to US trademark owners having a local interest. However, they need to be taken into account when deciding if a mark can be used in a given state.
Importance of Trademark Search
Before using a mark in the United States, as in most other countries, it is best to conduct appropriate searches for registered, pending, or in-use marks. We can assist you with this procedure.
Unique Appearance Under Trademark Law
When we talk about trademarks, we often refer to names, logos, and slogans that help consumers recognise the source of a product or service. However, the realm of trademarks extends far beyond, encapsulating the unique appearance or ‘trade dress’ of a product or its packaging, and granting businesses legal protection against copying or imitation.
A unique appearance under trademark law, also known as ‘trade dress,’ relates to the visual aesthetics or image that helps to distinguish a product or service. It may include features like size, shape, colour, texture, graphics, or even specific sales techniques. These attributes are considered protectable under the Lanham Act, the federal statute governing trademark law in the United States.
The prerequisite for this protection lies in the ‘distinctiveness’ of the appearance – that it should be identifiable with a particular source. For instance, the shape of a Coca-Cola bottle or the unique layout of an Apple store is recognisable by consumers and are thereby protected under the law.
For a unique appearance to qualify as trade dress, it must not only be distinctive but also non-functional. This means that the design elements do not contribute to the product’s performance but are purely aesthetic or brand-identifying features. It is this fine balance between distinctiveness and non-functionality that marks the unique aspect of trademark law.
How Do I Apply?
- Applications must be filed in English with the USPTO.
- To apply for registration, the applicant must have one of the following:
- Applications must be filed in English with the USPTO.
- To apply for registration, the applicant must have one of the following:
- actual use, i.e., the mark is already in use in the United States.
- Intention to use, i.e., there is a genuine intention to use the mark in the United States.
- A home registration or application—an application or registration for the same mark in their “country of origin” (If the application is made on this basis, the applicant must also have an “intention to use the mark.”)
- Applicants may claim more than one application basis, but they cannot claim both 1 and 2 for the same goods or services.
The term “country of origin” Refers to Either:
- The country in which the applicant has a genuine and effective industrial or commercial establishment.
- The applicant’s country of domicile
- The country in which the applicant is a national,
If the US application is based on a home application, it must be filed within six months of the home application.
Who Can Apply for Trademark Registration?
Anyone, natural or legal, may apply for registration.
What Can be Applied for Under Trademark?
Any sign that has the potential to distinguish between goods or services is registrable. This includes the shape of the product, its packaging, and its colour markings.
A single application can claim multiple classes of goods or services, but there is a fee for each class claimed. The International (Nice) classification system is used. Still, the USPTO requires the use of precise terms, such as “clothing.” Specific items of clothing must be listed.
Trademark Examination and Search
The USPTO considers applications on absolute and relative grounds.
Absolute Foundations
Examples of unacceptable marks include:
- characteristics (unless they have become distinctive through use).
- Resulting from the nature of the goods
- marks that have the potential to mislead the public about their nature, quality, or geographical origin.
- Marks are words or logos used in commerce to identify specific goods or services.
- Common surnames
- marks that are immoral or scandalous.
Relative Grounds
Suppose the mark applied for is so similar to another’s mark that it is likely to cause confusion, mistake, or deception. In that case, the office will file an objection. It will only look for registered trademarks and pending trademark applications.
Trademark Opposition
If the application passes the examination stage, it is published in the Official Gazette. It is open to third-party opposition for 30 days.
Any party who believes that the mark’s registration will cause them harm may file an opposition. For example, the owner of prior rights to a similar mark may file an opposition on related grounds (whether such rights were acquired simply through registration or through use). The opposition may also be filed on absolute grounds, such as if the registration would prevent the lawful use of a descriptive term.
What is a Notice of Allowance?
If no opposition is filed (or if the opposition is defeated), the USPTO issues a “Notice of Allowance.” An applicant who filed on the basis of “actual use” will have produced proof of that use by this time, and the mark will be registered.
An applicant who filed on the basis of “intent to use” will then have six months (potentially up to 30 months) to provide proof of use of the goods and services claimed. The mark is registered once that proof is provided. An applicant who filed on the basis of a home application or registration does not need to provide proof of use as long as they provide proof of mark registration in their “home” country. The trademark will then be registered.
Trademark Use
The proprietor must file a declaration stating that the mark is in use or provide an acceptable reason for non-use between the fifth and sixth years following the registration date.If a registered mark is not used for more than three years, the registration may be cancelled by a third party.
A proprietor can file a declaration of incontestability after a registered mark has been continuously used for at least five years. This is recommended because, with a few exceptions, it has the potential to provide:
- Conclusive proof of ownership and the exclusive right to use this mark
- Prior use or descriptiveness provides immunity from attack.
It should be noted that, while the USPTO only performs a formalities check on such claims, it is ultimately up to the courts to determine whether or not the mark is incontestable.
Trademark Renewal
Every ten years, registered marks must be renewed; at the time of renewal, use must be proven, or an acceptable reason for non-use must be provided.
Assignment of Goodwill
Only the associated goodwill in the mark can be assigned to US trademark rights.Unless the earlier assignee records the assignment with the USPTO, an assignment is void against a subsequent good-faith purchaser of a mark.
Common law and Trademarks
Under common law traditions, trademark rights can be enforced in the United States just as they can in the United Kingdom. Such rights are acquired simply by using a mark, but they are frequently difficult and expensive to enforce. They are limited to the geographical area where the mark is used.
We strongly advise you to seek registration of your marks.
Q: Can you trademark an appearance?
Yes, the appearance of a product or its packaging, also known as the trade dress, can be trademarked if it is distinctive and non-functional. It should be capable of identifying a source, not merely decorative or useful.
Q: Can I put a trademark on my website?
Absolutely. Websites often contain many trademarkable elements such as logos, taglines, unique colour schemes, distinctive page layouts, and even certain unique interactive features. However, each element must be distinctively associated with your business to be trademarkable.
Q: What is the purpose of a trademark?
Trademarks serve as an identifier of goods or services' source. They protect consumers from confusion and deception by ensuring that they can accurately identify the source of a product or service. For businesses, trademarks help build brand identity, customer loyalty and can be a vital asset for marketing.
Q: Is a website domain a trademark?
A domain name can be trademarked if it functions as a source identifier. However, merely owning a domain name does not grant you trademark rights. To obtain trademark protection, the domain name must be used in commerce, meaning that it is used to sell goods or services.
Q: What are trademark examples?
Common examples of trademarks include business names (like 'Nike'), logos (the golden arches of 'McDonald's'), slogans ('Just Do It' by Nike), and even unique product shapes (the contour bottle design of 'Coca-Cola'). Even some unique appearances like the layout of the Apple stores have been granted trademark protection
