Trademark in the United States

Definition

A mark, symbol, or design that is used to distinguish a particular make of merchandise or an individual service. Registration of a trademark with the United States Patent Office is not obligatory, for a trademark rightfully belongs to the first person who has used it. Registration does not automatically protect the owner from litigation. Once the trademark has been registered, the Patent Office is empowered to refuse the registration of infringing ideas, but the owner has to bring suit to restrain the use by another who has unlawfully appropriated his trademark.

Certificates of registration covering trademarks remain in force for 20 years, subject to cancellation at the end of 6 years unless the registrant, within 1 year preceding the expiration of such 6year period, files an affidavit (in U.S. law) showing that the mark is still in use, or showing that the nonuse is due to special circumstances, and not due to any intention to abandon the mark. (Revised by Ann De Vries, 1982)

For other meanings of it, read Trademark in the Legal Dictionary here.

In plain-English Law, Trademark as defined by Nolo’s Encyclopedia of Everyday Law (p. 437-455): A word, phrase, logo, symbol, color, sound, or smell used by a business to identify a product and distinguish it from those of its competitors. Compare trade dress, service mark, certification mark, and collective mark. treatise An extensive book or series of books written about a particular legal topic.

Trademark meaning

At common law a trade-mark is used to identify a producer’s goods. As such it serves as a sign of quality for consumers. Thus trademark’s are protected both at common law and under statutes. Trademarks must be distinct such that they are recognisable, not overly general and only are protected with regard to the products that the company makes.

At common law a trademark can be lost through disuse and did not need to be registered. Statutes may or may not have changed this fact depending upon the jurisdiction in question.

Jantzen Knitting Mills v. West Coast Knitting Mills, Cust. & Pat.App., 46 F.2d 182, Trade-Mark Cases, 100 U.S. 82, 87, 25 L.FA. 550. L.Ed 15 U.S.C.A. § 1127.

Legal Materials

This section covers the following topics:

U.S. Trademarks:

• Application Status
• Assignments
• Cease and Desist Letters
• Classes
• Obtaining U.S. Trademark Registration Records
• Obtaining U.S. File Wrappers
• Legal Research Materials
• State Trademarks
• Trademark Trial and Appeal Board

Special U.S. Trademark Searches:

• Preliminary and Comprehensive Searches
• Litigation Searches
• Watches

Foreign Trademarks:

• Obtaining Foreign Trademark Registrations
• Foreign Legal Materials

U.S. Trademarks

Application Status

Use the USPTO’s Trademark Applications and Registrations Retrieval System (TARR) to determine the legal status of an application. Otherwise, you can call the Trademark Assistance Center at 800-786-9199 (or 571-272-9250 from Northern Virginia).

Assignments

You can look up assignments recorded at the U.S. PTO since 1955 using the PTO’s Assignments on the Web.

Cease and Desist Letters

When a company learns about an infringing trademark they generally have their lawyer send a “Cease and Desist Letter” (or “C&D Notice”) asking the other mark owner to stop infringing. For more, see this page from the USPTO.

Classes

When you register a trademark, you have to indicate on the application what the mark will be used for. To standardize the categories, an international treaty known as the Nice Agreement establishes an International Classification of Goods and Services with 45 classes (1 through 34 for goods, 35 through 41 for services). The International Classes are quite broad, so the USPTO has broken the International Classes into its own more detailed categories, often referred to as “Goods and Services” classes. You can look up Goods and Services classes in The US Acceptable Identification of Goods and Services Manual. Each trademark application filed with the PTO must include at least one Goods or Services class.

The PTO also produces a Design Search Code Manual with special Codes for describing pictures. The International equivalents are the International Classification of the Figurative Elements of Marks under the Vienna Agreement and the International Classification for Industrial Designs under the Locarno Agreement.

These classes and codes can be helpful when searching trademark registration databases. Since most trademark searches are generally looking for situations where a consumer could be confused by the use of similar marks on similar products, limiting a search to goods or services in the same class (or designs with the same or similar Codes) helps pinpoint the marks that would be most likely to create confusion.

Obtaining U.S. Trademark Registration Records

The USPTO posts a free database of Federal trademark registration records called theTrademark Electronic Search System (TESS). TESS includes live, dead and pending Federal marks. You can see images. The database is current within a month of filing, and the system permits Basic or Advanced Boolean searching. Very nice.

More recently filed Federal trademarks registrations can be retrieved at the USPTO’sTrademark Search Facility in Arlington, VA (703-308-9800).

Fee-Based Alternatives: You can get U.S. Federal and state trademark registration records through several fee-based systems including CSC’s ActiveIP, Coresearch,Trademark Explorer, Lexis (TRDMRK;FEDTM for U.S. or TRDMRK;ALLTM for Federal and State), Westlaw (FED-TM), Thomson Compumark’s SAEGIS and Name Protect. Westlaw and SAEGIS feature Thomson Compumark’s TRADEMARKSCAN databases.

Obtaining U.S. File Wrappers

A “File Wrapper” contains all the documents in the U.S. PTO file for a trademark. Electronic copies of many U.S. file wrappers are available through a USPTO Web portal called the Trademark Document Retrieval (TDR) system. Otherwise, you can hire a company to get copies for you from the USPTO’s Trademark Search Facility in Arlington, VA (703-308-9800).

Legal Research Materials

Here are some legal research resources I have found useful for answering trademark requests.

1. McCarthy on Trademarks and Unfair Competition (West) is the leading trademark treatise.
2. The PTO’s Trademark Manual of Examining Procedure (TMEP) is the rulebook for trademark examiners reviewing trademark applications. The TMEP is also available on Lexis (TRDMRK;TMEP). The GPO stopped publishing a print edition in 2014, but you can still buy the print version from IP Data Corporation. The 6th and 7th editions of the TMEP are available in the HeinOnline Intellectual Property Law Collection (subscription only).
3. The Legal Information Institute links to the key primary legal materials (click on the “Resources” tab).
4. Legislative history materials for the Lanham Trade-Mark Act (P.L. 489, 79^thCongress, Chapter 540, 2^nd Session) in The New Trade-Mark Manual by Daphne Robert and Trademark Protection and Practice: Section by Section Legislative History of the Lanham Act (Lexis/Matthew Bender, 1993) by Jerome Gilson. If you don’t have ready access to these books, you can gather the legislative history materials on your own using the resources discussed in the “Federal Legislative History” entry.
5. The Products Comparison Manual for Trademark Users (BNA Books) by Francis M. Pinckney identifies judicial opinions that discuss the common use of a trademark by two types of business (e.g., a restaurant and a massage parlor).
6. Allen’s Trademark Digest categorizes cases involving Goods and Services in Conflict (e.g., eye make-up remover v. false eye lash remover) and Marks in Conflict (e.g. Lissen v Listen). The Digest is available in print from Wolters Kluwer and on CCH Intelliconnect.

State Trademarks

Many states post free trademark registration databases too. Links to these sites are posted on All About Trademarks and Research RoundUp: Business Filings Databases. If a state database isn’t listed, use Google or another search engine to double check.

You can search registration records for all 50 states using most of the fee-based systems listed in the Getting U.S. Trademark Registration Records section, above.

For a discussion of state trademark law, see State Trademark and Unfair Competition Law by the United States Trademark Association.

Trademark Trial and Appeal Board

When someone wants to challenge a Federal trademark, they file an Opposition (to oppose a pending application) or a Cancellation (to challenge an active mark) with the Trademark Trial and Appeal Board (TTAB). The PTO posts a Trademark Trial and Appeal Board page with sample forms, rules, the TTAB Inquiry System for looking up TTAB decisions and case files, and a link to the Trademark Trial and Appeal Board Manual of Procedure (TBMP).

Documents filed in trademark disputes before the Trademark Trial and Appeal Board, including final decisions, are available through the TTAB Trademark Trial and Appeal Board Inquiry System (TTABVUE). TTABVUE should be comprehensive starting in 2003. For better searching, the “Intellectual Property Administrative Filings” (IPADMIN-FILINGS) database on WestlawNext has TTAB filings. Final TTAB decisions are also published in BNA’s United States Patent Quarterly, which is available in print and through Bloomberg Law and the IP Resource Center on BNA.com.

You can Shepardize or KeyCite TTAB decision on Lexis and Westlaw, respectively. On Lexis, the format is “[year] TTAB LEXIS [decision number]” but you have to know the Lexis decision number to get the Shepard’s Report.

The TTAB issues some unpublished, non-precedential decisions. Unpublished decisions are summarized in the Official Gazette (OG) of the PTO. You can find the full text using the TTABVUE. I believe you can also buy the full text from BNA, if you can’t locate the ones you want in TTABVUE.

There are several TTAB practice treatises including the Guide to TTAB Practice, a detailed step-by-step manual (Aspen) by Jeffery A. Handelman, Trademark Trial and Appeal Board Practice and Procedure, which includes sample forms (West) by Gary D. Grugman, and A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice (ABA) edited by Jonathan Hudis.

B. Special U.S. Trademark Searches

Preliminary and Comprehensive Searches

U.S. law permits a person to acquire rights to a trademark through either registration or through common law use. So, to see if a mark (or something similar) is already in use, you have to check both the state and Federal registration databases discussed above and common law use.

For a preliminary search to see if a mark is in use, the action entails searching (1) the federal and state registration databases discussed above, (2) the Internet using two or more good search engines, (3) any of the fee-based services discussed in the Getting U.S. Trademark Registration Records section, above, that you have available and (4) additional reasonably priced databases to find common law uses in the news, published judicial opinions, domain names, product name (e.g.,Amazon.com, Google Product Search), etc. This preliminary search should pick up any obvious uses, and it may make a comprehensive search unnecessary.

To really clear a mark you will need a comprehensive trademark search. Comprehensive searching is done by in-house professionals or private companies, such as Thomson CompuMark (800-692-8833), and Government Liaison Services(800-642-6564).

Litigation Searches

LitAlert (Proquest Dialog) and LexMachina may be able to tell you if a company or an individual has been or is currently involved in trademark litigation. Alternatively, on the Federal level, you can search on the company name in the PACER Case Locator or one of the commercial docket search vendors and limit the Nature of Suit (NOS) code to 840 (Trademarks). If the trademark is a word, you can search the word in Bloomberg Law and limit the results to NOS 840 (Trademarks). You can also search the Intellectual Property Trial Court documents (IP-FILING) database on Westlaw.

You might also want to search the TTAB Inquiry System for cases before the USPTO’s Trademark Trial and Appeal Board.

Section 337 of the provides for expedited proceedings to decide trademark infringement cases concerning goods imported into the U.S. The cases are tried by the International Trade Commission and can be searched using Westlaw (FINT-ITC), Courtlink, or the ITC’s EDIS database.

Watches

Trademark holders will often want to “watch” for the registration or use of similar or identical marks. Catching a similar or identical use is the first step in “policing” a mark so that it does not become generic.

One way to “watch” is to search periodically through the relevant databases for a preliminary search (discussed above). Or you can also set up automated watches using most of the commercial services including Coresearch, SAEGIS and ActiveIP.

If you want to turn the job over to a pro, most of the serious trademark research firms will conduct regular watches (see “Preliminary and Comprehensive Searches,” above).

C. Foreign Trademarks

Obtaining Foreign Trademark Registrations

Information about Commercial and free databases with foreign trademark registration records are available in the World legal Encyclopedia, including an Alphabetical List of Intellectual Property Offices.

Foreign Legal Materials

For information on the trademark laws of individual foreign countries see the entry about Trademarks throughout the World in the World legal Encyclopedia, including English versions of the trademark laws of most countries and many of the leading IP-related treaties and how to register trademarks abroad. For additional information sources see “Foreign Laws” in this legal Encyclopedia.

Trademark in the U.S. Code

The United States Tradmark Code appears in Chapter 22 of Title 15 of the United State Code.

Trademark in E-Commerce Law

Trademark and the Legal Aspects of E-Commerce

Trademark

Find more information on Trademark in relation to the Gray Market Goods in the legal Encyclopedias.

Trademark and the International Trade Law

Resources

See Also

• Online Tax
• Internet Law
• Internet Marketing
• Internet Privacy
• Internet Sales
• Internet Tax
• Keyword Advertising
• Brand Names
• Copyrights
• Domain Names
• Foreign Laws
• Market Research
• Market Share
• Patents
• Foreign Patents
• United States Court of Appeals for the Federal Circuit

Further Reading

• Trademark entry in the Dictionary of International Trade Law (Raj Bhala)
• Trademark entry in the Gale Encyclopedia of U.S. Economic History (Thomas Carson; Mary Bonk)
• Trademark entry in the Dictionary of International Trade
• Trademark entry in the Dictionary of International Trade: Handbook of the Global Trade Community (Edward G. Hinkelman)