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(Basic Facts About Registering
A Trademark?)
Establishing Trademark Rights
Trademark rights arise from either (1) actual use of the mark, or
(2) the filing of a proper application to register a mark in the
Patent and Trademark Office (PTO) stating that the applicant has
a bona fide intention to use the mark in commerce regulated
by the U.S. Congress. (See below, under "Types of
Applications," for a discussion of what is meant by the
terms commerce
and use in commerce.) Federal registration is not required to
establish rights in a mark, nor is it required to begin use of a
mark. However, federal registration can secure benefits beyond
the rights acquired by merely using a mark. For example, the
owner of a federal registration is presumed to be the owner of
the mark for the goods and services specified in the
registration, and to be entitled to use the mark nationwide.
There are two related but distinct types of rights in a mark: the
right to register and the right to use. Generally, the first
party who either uses a mark in commerce or files an application
in the PTO has the ultimate right to register that mark. The
PTO's
authority is limited to determining the right to register. The
right to use a mark can be more complicated to determine. This is
particularly true when two parties have begun use of the same or
similar marks without knowledge of one another and neither
has a federal registration. Only a court can render a decision
about the right to use, such as issuing an injunction or awarding
damages for infringement. It should be noted that a federal
registration can provide significant advantages to a party
involved in
a court proceeding. The PTO cannot provide advice concerning
rights in a mark. Only a private attorney can provide such
advice.
Unlike copyrights or patents, trademark rights can last
indefinitely if the owner continues to use the mark to identify
its goods or services. The term of a 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 is
canceled.
Types of 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 based on that use (a "use"
application). (2) An applicant who has not yet used the mark may
apply
based on a bona fide intention to use the mark in commerce (an
"intent-to-use" application). For the purpose of
obtaining
federal registration, commerce means all commerce which may
lawfully be regulated by the U.S. Congress, for example,
interstate commerce or commerce between the U.S. and another
country. The use in commerce must be a bona fide use in the
ordinary course of trade, and not made merely to reserve a right
in a mark. Use of a mark in promotion or advertising before
the product or service is actually provided under the mark on a
normal commercial scale does not qualify as use in commerce.
Use of a mark in purely local commerce within a state does not
qualify as "use in commerce." If an applicant files
based on a
bona fide intention to use in commerce, the applicant will have
to use the mark in commerce and submit an allegation of use to
the PTO before the PTO will register the mark (See page 12). (3)
Additionally, under certain international agreements, an
applicant from outside the United States may file in the United
States based on an application or registration in another
country.
A United States registration provides protection
only in the United States and its territories. If the owner of a
mark wishes to protect a mark in other countries, the owner must
seek protection in each country separately under the relevant
laws. The PTO cannot provide information or advice concerning
protection in other countries. Interested parties may inquire
directly in the relevant country or its U.S. offices or through
an attorney.
Who May File an Application?
The application must be filed in the name of the owner of the
mark; usually an individual, corporation or partnership. The
owner of a mark controls the nature and quality of the goods or
services identified by the mark. See below in the line-by-line
instructions for information about who must sign the application
and other papers.
The owner may submit and prosecute its own application for
registration, or may be represented by an attorney. The PTO
cannot help select an attorney.
Foreign Applicants
Applicants not living in the United States must designate in
writing the name and address of a domestic representative -- a
person residing 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
person at the address indicated is appointed as the applicant's
domestic representative under §1(e) of the Trademark Act. The
applicant must sign this statement. This person will receive all
communications from the PTO unless the applicant is represented
by an attorney in the United States.
Searches for Conflicting Marks
An applicant is not required to conduct a search for conflicting
marks prior to applying with the PTO. However, some people
find it useful. In evaluating an application, an examining
attorney conducts a search and notifies the applicant if a
conflicting mark is found. The application fee, which covers
processing and search costs, will not be refunded even if a
conflict is found and the mark cannot be registered.
To determine whether there is a conflict between two marks, the
PTO determines whether there would be likelihood of
confusion, that is, whether relevant consumers would be likely to
associate the goods or services of one party with those of the
other party as a result of the use of the marks at issue by both
parties. The principal factors to be considered in reaching this
decision are the similarity of the marks and the commercial
relationship between the goods and services identified by the
marks. To find a conflict, the marks need not be identical, and
the goods and services do not have to be the same.
The PTO does not conduct searches for the public to determine if
a conflicting mark is registered, or is the subject of a pending
application, except as noted above when acting on an application.
However, there are a variety of ways to get this same type of
information. First, by performing a search in the PTO public
search library. The search library is located on the second floor
of the South Tower Building, 2900 Crystal Drive, Arlington,
Virginia 22202. Second, by visiting a patent and trademark
depository library (at locations listed on pages 14 and 15).
These libraries have CD-ROMS containing the trademark database of
registered and pending marks. Finally, either a private trademark
search company, or an attorney who deals with trademark law, can
provide trademark registration information. The PTO cannot
provide advice about possible conflicts between marks.
Laws & Rules Governing Federal Registration
The federal registration of trademarks 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. For forms and information regarding the
registration of these marks, please call the appropriate
trademark
information number indicated below.
Where to Send the Application and Correspondence
The application and all other correspondence should be addressed
to "The Assistant Commissioner for Trademarks, 2900
Crystal Drive, Arlington, Virginia 22202-3513." The initial
application should be directed to "Box NEW APP / FEE."
An
AMENDMENT TO ALLEGE USE should be directed to "Attn.
AAU." A STATEMENT OF USE or REQUEST FOR AN
EXTENSION OF TIME TO FILE A STATEMENT OF USE should be directed
to "Box ITU / FEE." (See page 5 for an
explanation of these terms.)
The applicant should indicate its telephone number on the
application form. Once a serial number is assigned to the
application,
the applicant should refer to the serial number in all written
and telephone communications concerning the application.
It is advisable to submit a stamped, self-addressed postcard with
the application specifically listing each item in the mailing,
that
is, the written application, the drawing, the fee, and the
specimens (if appropriate). The PTO will stamp the filing date
and serial number of the application on the postcard to
acknowledge receipt. This will help the applicant if any item is
later lost or if the applicant wishes to inquire about the
application. The PTO will send a separate official notification
of the filing date and serial number for every application about
two months after receipt.
Use of the "TM," "SM" and "®"
Symbols
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 claim. It is not necessary to have a registration,
or even a pending application, to use these designations. The
claim may or may not be valid. The registration symbol, ®, may
only be used when the mark is registered in the PTO. It is
improper to use this symbol at any point before the registration
issues. Please omit all symbols from the mark in the drawing you
submit with your application; the symbols are not considered part
of the mark.