The terms “trade name” and “commercial name” mean any name used by a person to identify his or her business or vocation.
The term “trademark” includes any word, name, symbol, or device, or any combination thereof—(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The term “service mark” means any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
The term “certification mark” means any word, name, symbol, or device, or any combination thereof— (1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
The term “collective mark” means a trademark or service mark— used by the members of a cooperative, an association, or other collective group or organization, or which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register, and includes marks indicating membership in a union, an association, or other organization.
The term “mark” includes any trademark, service mark, collective mark, or certification mark.
The benefits of federal trademark registration are that the registered mark is admissible in evidence and shall be prima facie (accepted as correct until proved otherwise) evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration. In addition, the federal district courts have jurisdiction over actions for violation of federal trademark law (Lanham Act) without regard to the amount in controversy or to diversity or lack of diversity of the citizenship of the parties. This is an exception to the federal jurisdictional prerequisites of an amount in controversy exceeding $75,000, and diversity among the parties (28 USC 1332).
After successful prosecution of a legal action for infringement, the holder of a registration can recover:
- an order that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of the defendant, bearing the registered mark or, in the case of a violation of section 1125 (a) of this title or a willful violation under section 1125 (c) of this title, the word, term, name, symbol, device, combination thereof, designation, description, or representation that is the subject of the violation, or any reproduction, counterfeit, copy, or colorable imitation thereof, and all plates, molds, matrices, and other means of making the same, shall be delivered up and destroyed;
- any damages that the Plaintiff sustains;
- any profits that the Defendant had;
- the costs of suit; &
- three times the greater of lost profits or damages, attorney’s fees, and prejudgment interest upon showing the use of a counterfeit mark.
In addition, a federal trademark registration is a basis for obtaining trademark registration in foreign countries.
The U.S. trademark (or copyright for that matter) registration may be recorded with U.S. Customs Service to prevent importation of infringing foreign goods.
The ® symbol can be used to impart constructive notice of federal trademark registration, not state registration. For unregistered or state registered trademarks, a holder can use the TM or SM symbol to denote common law, e.g., unregistered rights.
As an alternative to federal trademark registration, states also register trademarks. California for example registers trademarks under the “Model State Trademark Law” (enacted October 14, 2007). While California trademark may differ from that of other states, the Model State Trademark Law that California follows make California trademark registration preferable to having an unregistered common law trademark, and offer some advantages or alternatives to federal registration:
- Speed – One can obtain state registration of trademarks (a few months) as compared to federal registration (one (1) year or more).
- Lower registration fees – in California state trademark registration costs $70, whereas it costs $275 or more for federal registration (37 CFR 2.22 and 2.6(a)(1)(iii)).
- The application process for a state trademark application is less involved, and only requires the applicant to show usage in the state as opposed to interstate commerce.
- An applicant can obtain a state registration even if a federal registration does not succeed.
- It offers state-wide protection and may serve as evidence of the validity and ownership of the trademark.
- One can obtain multiple state registrations to protect the trademark in the markets where it is used.
- A state registration can be a basis to stop online infringement.
- A state trademark registration can serve as evidence or a basis for prior use, a defense to trademark infringement.
- State law may permit a court to award attorney’s fees against an infringer.
Apart from state or federal trademark registration, it is also possible to protect trademarks in other countries. Those rights depend upon local laws as well as whether or not the country in question has acceded to international agreements such as the Paris Convention for the Protection of Industrial Property (1883; last amended in 1979), or the Madrid System which consists of the Madrid Agreement (1891), and the Madrid Protocol (1989). The Madrid Protocol provides U.S. trademark registration holders with a cost-effective and efficient way for trademark holders — individuals and businesses — to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. Moreover, no local agent is needed to file the application. While an International Registration may be issued, it remains the right of each country or contracting party designated for protection to determine whether or not protection for a mark may be granted. Once the trademark office in a designated country grants protection, the mark is protected in that country just as if that office had registered it. The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization’s International Bureau.
To discuss trademark registration or issues related to trademark infringement, feel at liberty to contact us.