United States: Trademark Law

Last Updated: December 19 2014
Practice Guide by Brinks Gilson & Lione

A trademark can be defined as any word, name, symbol, or device used by manufacturers or merchants to identify their goods or services and distinguish them from others. Trademarks can be slogans, shapes, and colors; even fragrances and sounds can qualify for trademark protection. Within the broad classification of trademarks there are several specific categories:

  1. Trademarks historically refer to marks that are directly applied to products in trade, for example, PEPSI and COKE for cola drinks, TOYOTA for automobiles, JOHN DEERE for farming equipment, SKULL CANDY for audio headphones, and SONY for televisions.
  1. Service Marks identify a service provided by a business such as BALLY TOTAL FITNESS for health club services, MOLLY MAID for cleaning services, and YAHOO for Internet services.
  1. Collective Marks are used to identify associations such as social fraternities and labor unions, for example CPA to indicate members of the American institute of Certified Public Accountants.
  1. Certification Marks are created by standards organizations for use by others to indicate to purchasers that products or services comply with certain characteristics or standards. Examples include UL, NSF, and Good Housekeeping.

A. Establishing Trademark rights

1. Choosing a Mark. It is important to select a trademark that identifies and distinguishes a product or service from others in the marketplace. So-called “strong marks” are preferred over “weak marks.” The relative strength of a mark under the law is determined by its relative uniqueness. The law divides marks into four categories: generic, merely descriptive, suggestive, and arbitrary.

  1. Generic Marks. The law will not help a company protect a mark that is considered generic. For example, the marks “super glue” for glue and “shredded wheat” for cereal have been determined to be generic.
  1. Descriptive Marks. A mark is considered merely descriptive when it directly describes a product or one or more of its important characteristics. Generally, the law will not help to protect a mark that is merely descriptive except where the mark becomes well recognized in the marketplace as being the trademark of the company that uses it, typically through long, continuous, and exclusive use. For example, the mark RAISIN BRAN is a descriptive mark for cereal, but has become well recognized. Normally the law considers such marks to be weak marks. A descriptive mark such as DRY KLEAN for a dry-cleaning agent may make it easier to educate consumers through advertising about the nature of the product bearing the mark, but it may be difficult and even impossible to stop later unauthorized users from using the mark. Worse yet, a highly descriptive mark for a popular product may become a generic term for that product, making it available for everyone’s uses.
  1. Suggestive Marks. A mark is considered to be suggestive when it hints at the nature or a desirable quality of a product, without actually describing it. For example, OASIS has a cool and refreshing connotation, thus making it a rather good mark for office water coolers. The mark is suggestive, since it does not actually describe the product.
  1. Arbitrary Marks. A mark is considered to be arbitrary when it is a made up word or symbol with no specific meaning, such as EXXON or XEROX, or when it is a word or symbol with a dictionary meaning unrelated to the product, such as ADVENT for stereo speakers. From a legal point of view, arbitrary marks are the strongest and the easiest to protect and enforce against later unauthorized users, as long as they are not used by others in a way that could create confusion.

2. Trademark searches. Once a mark is selected, a trademark search should be conducted to determine if others are using the same or a similar mark. online searches can be made via the USPTO website (www.uspto.gov), while more thorough searches are available through various trademark firms that examine a large body of information, including USPTO data, local telephone books around the country, trade journals, internet domain names, etc. once the results of a search are obtained, a determination can be made as to whether the proposed mark would present a likelihood of confusion in view of existing trademark uses.

3. Rights of a Mark. In general, trademark rights begin with actual use of the mark in commerce. Under common law principles (i.e. the law as developed by court case precedent), the first user of a mark is provided with priority with respect to his or her goods or services in his or her geographic areas of actual use and the zone of natural expansion of the mark’s use, even with respect to a business that later obtains a federal registration for the same or a similar trademark. Rights also can be based on constructive use, i.e., legally implied use, as part of the registration process described in section D below.

4. Proper use of a Trademark. Proper use of a trademark is important to ensure that it remains enforceable and does not become generic. One of the simple rules is to distinguish trademarks from surrounding text by capitalizing the initial letter or all letters. For example, the TOYOTA trademarks can be distinguished from surrounding text using bold or italic fonts or by placing the trademark within quotation marks or in a stylized form or logo type that has become associated with the mark. Never use a trademark as a noun, but instead use it as an adjective to modify a noun. A good test for proper use of a trademark is to remove the trademark from the sentence or text; if the sentence still makes sense, then the use is proper. For example, referring to a FRIGIDAIRE refrigerator constitutes proper use, versus referring simply to a FRIGIDAIRE, which constitutes improper use.

5. Notice. Proper notice should be provided to the public that a mark is regarded as a trademark. Before a federal registration is obtained, a “TM” or “SM” designation can be used to indicate a claim of rights as a trademark or a service mark, respectively. These designations indicate that the user regards the mark as its own mark. Once a federal registration is obtained, the appropriate designation can be used to signify the registration, e.g., “registered” or the designation “®”.

C. Trade Dress

Trade dress can be thought of as the visual appearance or “total image” of a product or service, and can include a product’s features—such as shape, configuration, texture, size, color, smell, graphic design or packaging—or service features—such as décor, architectural features, menu and layout. Trade dress protection is complementary to, and sometimes overlaps with, copyright protection and design patent protection, which also protect an object’s appearance.

Trade dress may be protected by filing a trademark application with a drawing depicting a single rendition of the mark; the applicant must indicate that the mark is three-dimensional. In order to protect some forms of trade dress, such as a product design, the owner must prove public recognition of the design as a trademark. This is known as “secondary meaning” or “acquired distinctiveness.” Product packaging requires that the applicant prove the trade dress is inherently distinctive or has secondary meaning.

Trade dress will not protect features that are primarily functional or utilitarian. Generally, features that predominately relate to a product’s utility are deemed functional, as are aspects that are “essential to the use or purpose of the product” or that “affect the cost or quality of the product.” However, where multiple arrangements to perform the same functions exist, the features of a particular arrangement may be nonfunctional.

D. Federal Registration Process

1. Advantages of registration. Although trademark rights do not require registration, there are significant benefits provided by federal trademark registration, including:

  • Rights are conferred on a nationwide basis without regard to areas of actual use;
  • Certain rights in the trademark become “incontestable” after five (5) years of issuance;
  • Federal registration provides access to federal court jurisdiction and also allows recovery of certain types of damages unavailable without a federal registration; and
  • Federal registration provides constructive notice to those who later adopt similar marks. in other words, the law treats the later user as having been aware of the existence of the registered mark, even if they did not check the records. The effect of this provision is to give the registrant priority rights over anyone who begins use of the same or a similar mark after registration.

2. Procedural requirements for federal registration. A federal registration application is filed in the name of the trademark owner. Applications can be based on actual use of the mark in interstate commerce or on a bona fide or good faith intention to use the mark in the future. An application also can be based on a foreign application or a foreign registration, and must include a description of goods or services with which the mark is used or intended to be used.

Applications can be filed electronically using the Trademark electronic Application system (TEAs) at www.uspto.gov. After the application is filed with the USPTO, it is examined to, among other things, determine if there is any likelihood of confusion with another trademark, or if the mark is descriptive, or if the identification of the goods and services needs clarification. After the application has passed examination, the mark is published in the Trademark Official Gazette, which starts the 30 -day period for any person to oppose the mark (discussed below). If no opposition is filed, a certificate of registration is issued.

3. Maintaining Trademark rights. In order to maintain trademark rights once a certificate of registration is issued, take note that,

  1. The mark must be consistently used so that it does not become generic;
  1. A statement of Use, and optionally a Declaration of incontestibility, must be filed between the fifth and sixth year from the date of registration; and
  1. The registration is valid for 10 years from its stated registration date unless sooner terminated by law and provided that a Declaration of Continued Use is filed between the fifth and sixth year from the date of registration. The registration may be renewed for additional 10 -year terms provided that the mark is still in use. The life of a federal trademark registration can be indefinite provided that renewal requests are filed every 10 years.

E. Patent and Trademark office Proceedings contesting Trademarks

In addition to infringement actions in the courts, several procedures are available to those who seek to contest a federal registration application or registered mark. One proceeding referred to as an “opposition” may be instituted by any member of the public who believes he or she will be damaged by the mark’s registration. Oppositions are filed within 30 days of the mark’s publication in the Trademark official Gazette. A procedure referred to as a “cancellation” is also available to those who seek to cancel a registered mark based on the belief that the owner is not entitled to registration.

F. Domain names

A domain name is an alias for an internet Protocol (IP) address, which identifies the location of websites on the internet. Instead of having to remember a long sequence of numbers, for example,, an internet user can key in an easy-to-remember domain name, e.g., www.brinksgilson.com. Domain names are registered with an internet Corporation for Assigned names and numbers (ICANN) accredited registrar.

Use of a domain name merely as an informational part of an internet address does not, by itself, qualify as trademark use. in order to qualify the domain name must function separately as an indicator of source. it then can be registered with the USPTO as a trademark or service mark.

A domain name record is initially active for two years; however, this does vary from country to country. After the first two years, the record must be reviewed on an annual basis. Domain names can be canceled for various reasons, including failure to pay registration fees and decisions in domain name disputes. There is no need to have an active web page in order to register or maintain a domain name record.

G. State Trademark registration

If a mark is used within a single state and is not used in interstate commerce, consider obtaining a state trademark registration, which provides protection only within a state’s borders. Where federal registration is not available, state registration is recommended.

H. Trademark infringement litigation

Infringement litigation can be conducted in the federal courts if a federal registration is involved, or if a false designation of origin or false or misleading representation of fact has been made. State court actions can be filed to enforce state registered marks or common law trademark rights. Infringement is based on a finding of a likelihood of confusion or actual confusion between the registered mark and the other user’s mark.

Remedies for trademark infringement include recovery of the defendant’s profits and the award of the plaintiff’s damages and costs. In exceptional cases, treble damages are available as well as attorneys’ fees. In addition, injunctive relief and destruction of the infringing goods are available remedies in some circumstances.

I. Madrid Protocol

International trade has been increasing steadily over the last 50 years. Today, few companies can afford to rely on their home market alone. Companies look to expand by penetrating established markets and creating new markets for their products. Marketing the same product under different trademarks in different countries is inefficient and costly in terms of promotion, advertising, and packaging. To reduce these costs and file a single trademark registration application, the World intellectual Property organization (WIPRO) has initiated and promoted the Madrid Protocol.

The United States became a member of the Protocol in November 2002, and benefits of filing under the Protocol became available in November 2003—an important step in making trademark filing easier in multiple countries. Specifically, the Protocol is an international trademark filing treaty that enables a company or an individual to file a single trademark application with the USPTO and extend it to as many member countries of the Protocol as desired. There are currently more than 50 Protocol members, including most of Western Europe, Australia, China, and Japan. Application to the extended countries is conveniently done in one language and with one fee.

J. e-commerce

With the rapid expansion of the internet and growth of e-commerce, web-related trademark issues are also on the rise. These issues include domain name registration and use, so called “cyber-squatting,” and the use of trademarks as metadata and/or key words in internet advertising and search engines. The courts are currently grappling to apply trademark law, both old and new, to these issues, and new issues continue to develop as the digital landscape evolves.

For example, suppose you perform an internet search using a trademark as a search term. Does the search engine’s presentation of a sponsored advertisement for another company constitute an infringing use of that trademark? Consumers may be confused, believing that these advertisements come from or are sponsored by the trademark owner. Any level of confusion may cause the user to consider a competitor’s goods or services.

On the other hand, use of third-party trademarks for purposes such as comparative advertising, resale, and criticism may be exempted from infringement as “fair use.” Generally, most courts find that these cases constitute non-exempted trademark use, but the decisions vary substantially in terms of whether such uses are likely to cause confusion, therefore resulting in trademark infringement. These and other internet-related trademark issues continue to challenge the public, lawyers, and the courts.

K. International Trademarks

The importance of trademarks to international business is constantly increasing. What pertains to U.S. trademarks does not necessarily pertain to trademarks outside of the U.S., however. Laws are different. Customs are different. Courts are different. Trademark use and advertising are different.

  1. Filing Strategies. In order to navigate these challenging waters, a trademark owner needs to establish priorities for using its marks and enforcing them against third parties. Once the markets for selling goods/services are determined, including projected markets for the near future, a filing strategy for these countries must be established. This strategy might include national filings in the relevant countries, use of international and regional filing treaties, or combinations of these methods.
  1. Searches. A search should be conducted before the filing process begins. Methods might involve foreign associates, search companies, trademark office databases, and the internet. Once the risks of confusion have been assessed, the filing strategy can be implemented.
  1. Prosecution of Marks. After filing, each trademark application will face prosecution under the rules and practices of each jurisdiction where a filing has occurred. These actions will involve both trademark actions from the trademark office based on registrability of a term as a trademark, and possibly confusion with third-party marks where applicable. In addition, third parties themselves may file oppositions against the registrability of a mark depending on national rules and procedures. Agents from the relevant jurisdiction will be needed to answer these claims. once the actions have been overcome through procedures of varying complexity depending on jurisdiction, the mark will register.
  1. Maintenance. Almost all countries require anywhere from three (3) to five (5) years of use of a mark to ensure its validity. Without such use, third parties in most countries can cancel the mark for non-use. in addition, all countries have renewal procedures anywhere from seven (7) to fourteen (14) years either from the filing or the registration date. The life of a mark in all countries can be indefinite, provided renewals are filed in a timely manner.
  1. Enforcement. After registration registrants may need to file court or administrative actions based on infringement or various types of unfair competition. These actions may occur before trademark office tribunals or in courts of law. Injunctions, partial recovery of costs and some damages may be awarded; however, these results can take years to achieve. in most cases, a more reasonable and realistic goal is to stop use of the infringing mark. Alternatively, global co-existence agreements may be the answer, depending on the marks and goods/services involved.
  1. Trademarks and the internet. The internet has made the use of a trademark on a website, as a domain name, or as a new generic top-level domain (GTLD) instantaneously global. Many issues arise as a result of the vast range of uses of marks on the internet, including jurisdiction over infringement claims, the type of actions to use to enforce claims (court of law or arbitration panel), relevant laws, and more.
  1. Domain names. A domain name, as defined in the U.S. section of Trademarks (see section f above), is the internet Protocol or IP address for a website, for example, www.brinksgilson.com. It is the word version of a numbering system used by ICANN, the entity that controls the registration of all domain names, to identify the location of websites on the internet. Use of trademarks within domain names can present unlimited challenges. As with any enforcement policy, trademark owners must decide which claims to enforce. The easy place to start is with those domain names that are confusingly similar and lead to websites that sell similar goods/services. At that point, the decision to enforce will depend on budgets, chances of success, business needs, and other factors. Infringing domain names can be enforced through administrative procedures delegated by ICANN to entities like the WIPO and the national Arbitration forum (NAF). These entities implement the Uniform Dispute resolution Procedure (UDRP) to determine if domain names infringe the complainant trademark owner’s rights. They also handle arbitration cases for both the old and GTLD domains and many country-level domains (.com, .br, .co.uk., etc.)
  1. gTLDs. The same criteria that drive enforcement action on will drive them against new, old and country-level gTLDs on the internet. Those generic top and country-level domains which are confusingly similar and lead to websites that sell similar goods/services warrant serious attention. After that, the usual factors of budget, efficiencies and return on investment will influence whether actions are filed in courts of law or before arbitration panels. Countries vary in terms of how country-level domains can be attacked for infringement. For gTLD domain names, considerations of whether they are old (.com) or new (.canon) will probably dictate the type of action warranted.
  1. International Protection of Trade Dress. Countries vary when it comes to what they call trade dress (look- alikes, get-up, shape, etc.) and how they protect it, if at all. First, determine what is registerable in a given jurisdiction (color, three-dimensional aspects, sound, shape, texture, etc.) and what rights are enforceable under trademark or unfair competition laws. Once this information is gathered, strategies can be determined for protection and enforcement. As with any trade dress issues, various aspects of the trade dress (design, content, sound, etc.) may be protectable under the copyright law in a given jurisdiction.

To find out more please access our IP Primer page.

This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.

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Supporting Documents
Other United States Advice Centres
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Useful Resources
The IP primer provides an overview of the complexities of IP law, is an excellent resource for both new and experienced professionals and available in a number of languages.
A collection of recent and significant publications by the Experts at BGL.
USPTO is the federal agency for granting U.S. patents and registering trademarks.
Administers the U.S. copyright law and advises Congress and other government agencies regarding copyright issues.
WIPO is the global forum for intellectual property services, policy, information and cooperation.
INTA is a global association of trademark owners and professionals.
The Intellectual Property Owners Association is a trade association for owners of patents, trademarks, copyrights and trade secrets.
The AILPA is an innovator, powerful advocate, and visible global leader in intellectual property.
AIPPI is an international organization comprised of business firms, executives, lawyers, educators, patent and trademark agents, intellectual property owners, and other persons interested in the worldwide protection of patents, designs, trademarks, trade names, know how, goodwill, copyright, and other intellectual property rights and the elimination of unfair trade practices.
BIO is the world's largest trade association representing biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations.
Supports innovation, competitiveness and economic growth across Europe through a commitment to high quality and efficient services delivered under the European Patent Convention.
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