Like Gardens, US Trademarks Require Ongoing Care
While it is true that most of the individual states in the US have their own trademark registration systems, most companies focus on federal (national) trademark registrations because of the superior recourse and government assistance available with a federal trademark registration.
Federal Trademark Registration
US trademark rights are largely based on use. In the federal registration system, a US entity must have “used in commerce” the mark in question for all of the goods and/or services stated in the application before a valid registration can be issued to cover those goods and/or services.
In order to maintain the US trademark registration going forward, the registrant is required to periodically submit sworn declarations of continued use in commerce, stating under oath that the registrant is still using the registered mark for all of the remaining goods. The registrant is required to delete from the registration items on which the mark is no longer used.
“Use in commerce” under the federal trademark system is a term of art, and it means bona fide use of the mark as a trademark in ordinary course of business. Thus, mere advertising is insufficient, and token or sporadic sales or shipments might not suffice. Moreover, such use must be in commerce that can be regulated by the US Congress, usually meaning either interstate or international commerce. Intrastate commerce may not be enough.
The use requirement is rather unique in the world of intellectual property – many foreign nations allow trademark registrations without use – this is especially an area that foreign trademark applicants have to pay attention to. It is not unusual to see applications from foreign applicants, based on intent to use rather than based on Section 44 (based on foreign applications and registrations), which then mature into US trademark registrations with huge numbers of products and services listed.
Start with a Valid Registration
So step one, for anyone with a US trademark registration, is to review the goods and services identified, and verify that the mark has actually been used on ALL of those goods and services as of the relevant date or the application filing date for an application based on actual use and the statement of use filing date for an application based on intent to use.
Next we turn to renewals. In order to prune from the trademark registry marks that are not actually being used, the US Trademark Office requires the filing of sworn statements of continued use (Section 8 Declarations) during the one-year period before the 6th, 10th, 20th, 30th, etc. anniversaries of the registration. The registration is automatically cancelled if the statements of continued use are not timely filed. Each of these filings would also represent a juncture at which the registrant should carefully re-examine the products and services listed, to ensure that the sworn statement of continued use is actually accurate — i.e., that the registrant continues to use the mark in commerce for all of the remaining goods and services. All unused items must be removed from the registration.
Update Registrations by Filing New Applications
The limitation of keeping the goods and services current in a US trademark registration is that no new items (goods or services) may be added after the initial application filing. It is common for companies to extend the use of their more popular marks to related goods and services over time, and it is beneficial to have federal trademark registration covering those items. The recommended course of action would be to “update” the registrations by filing new applications to cover ALL of the current products and services (including those in the existing registrations), while keeping the old registration alive at least until the new registrations have become incontestable (through five years of continued and exclusive use, and preferably with the Section 15 declaration of incontestability filed with the USPTO).
Foreign Trademark Registration
One big exception for the requirement of use in commerce is that foreign applicants, filing under Section 66 (International Registration under the Madrid Protocol) or under Section 44(d) (based on foreign trademark registration), can obtain the initial US registration of the mark without use in commerce in the US.
This is one of several areas in which a foreign entity actually has an advantage over its US counterparts. (The notable other area is that a foreign copyright author can enforce copyrights in the US without a US registration, while a US author cannot sue without a US registration.) However, these Section 44 or 66 registrations are still subject to the requirements for filing statements of continued use. So as a practical matter, the foreign registration must have started using the mark in question by at least the 6th anniversary of the US Trademark registration.
Moreover, a right in a trademark is not very meaningful if it cannot be enforced. Under US law, enforcement of trademark rights is again constrained by use. The seminal Dawn Donut case stands for the rule that one important factor in finding likelihood of confusion to support a claim of infringement is that the commerce of the two parties must be overlapping geographically. Therefore, a donut shop must move into the geographical vicinity of the infringer before it can seek enforcement of its registered trademark. This rule would appear to prevent the foreign registrant (under Section 44 or 66) who has not yet commenced use in the US at all, from seeking to enforce his registered mark in the US. Some commentators have recommended the use of full commerce sites (offering the goods and services for actual orders, complete with shopping cart) to try and extend the scope of the use in commerce.
The world of trademark law is a complex one and those who wish to navigate it alone may face significant financial losses. Find out more about protecting your intellectual property assets by speaking with one of our attorneys during a free initial consultation. Call 1-855-UR-IDEAS today!
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Photo Attribution: “German Garden Gnome” by Colibri 1968 is in the Public Domain.
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