World Trademark Review Yearbook: United States · · 2018-05-07non-traditional trademarks marks such as colour, ... filing of the required affidavit and payment of the prescribed

A global guide for practitioners

Yearbook2012/2013

Supported by

United StatesDuane Morris LLP

Cover companies_Layout 1 28/08/2012 16:17 Page 30

WTR YB 2012_13_Text_WT Yearbook 28/08/2012 16:46 Page 312

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United StatesContributing firm

Duane Morris LLP

AuthorsLewis F Gould, Jr, Gregory P Gulia, VanessaC Hew and Mitchell A Frank

1. Legal framework

Federal and state protectionIn the United States, trademark law is governedby federal and state law. Federal trademark lawis governed by the Lanham Act, which governsthe scope of trademark use, registration,protection and enforcement. Other federalstatutes governing trademark use include:• the Federal Trademark Dilution Act of 1995

and the Trademark Dilution Revision Act of2006;

• the Anti-cybersquatting ConsumerProtection Act of 1999;

• the Anti-counterfeiting and ConsumerProtection Act of 1996; and

• the Trademark Counterfeiting Act of 1984.

Trademark rights in the United States arenot exclusively governed by federal law. Statetrademark statutes and common law provideoverlapping protection regarding theregistration and enforcement of trademarks.However, the requirements and scope of statetrademark protection vary by state. Generally,federal trademark law does not pre-empt statetrademark law unless a conflict exists betweenfederal and state law.

International treatiesThe United States is a signatory to:• the Paris Convention;• the North American Free Trade Agreement;• the General Agreement on Tariffs and Trade;• the Agreement on Trade-Related Aspects of

Intellectual Property Rights;• the Madrid Protocol; and

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• the Singapore Treaty on the Law ofTrademarks.

The Madrid Protocol is an internationaltreaty that allows a trademark owner to seekregistration in any of the signatory countrieswhich have joined the protocol by means of asingle international application.

On October 1 2008 the United Statesratified the Singapore Treaty, which was thefirst international instrument to recognisenon-traditional trademarks marks such ascolour, sound, three-dimensional, olfactory,taste and touch marks. The Singapore Treatyalso addressed:• the form and means of transmittal of

communications with trademark registriesof the signatory nations and authenticationof signatures;

• relief when an applicant or a holder hasmissed a deadline in connection with aprocedural action; and

• issues relating to the recording oftrademark licences.

2. Unregistered marks

In the United States, trademark rights areconferred through use. Federal registration of atrademark will be granted only upon ademonstration of bona fide use of thetrademark in connection with the relevantgoods or services in interstate commerce.

Under federal law, unregistered marks areafforded trademark protection provided thatsuch trademarks have been used in interstatecommerce or in foreign commerce with theUnited States. However, the commercial use ofthe mark must be in the ordinary course oftrade. Use of an unregistered mark solely forthe purpose of reserving rights is insufficientto confer trademark protection.

Under the Lanham Act, the owner of anunregistered trademark is protected againstinfringement and dilution of the mark byothers. Section 43(a) of the Lanham Act providesthat anyone that uses any mark or falsedesignation of origin in connection with anygoods or services that is likely to causeconfusion, mistake or deception as to the sourceor sponsorship of goods or services shall be

liable in a civil action. The Lanham Act alsoprotects unregistered trademarks from dilution.However, the protection of unregistered marksmay be limited to the geographical area wherethe unregistered mark has been in actual use orhas acquired recognition.

3. Registered marks

Federal trademarks registered on the PrincipalRegister are entitled to several benefits,including:• a legal presumption of the registrant’s

ownership of and exclusive right to use themark;

• federal jurisdiction over an actionconcerning the mark;

• incontestable status of the registrationupon fulfilment of certain requirements;and

• the ability to prevent importation ofinfringing foreign goods.

Requirements for registrationAn application to register a mark must be filedby the owner of the mark or, with respect to‘intent to use’ applications, by the party whichitself (or via a licensee) has bona fide intent touse the mark. Trademark registrations may beowned by individuals or entities.

Representative of applicantProvided that no other attorney or law firmhas previously been appointed as arepresentative, it is unnecessary for anattorney to file a power of attorney or anyother document authorising his or herappointment as the owner’s representative.Generally, any attorney who meets thestatutory requirements and appears in personor files a document on behalf of the owner willbe accepted as a duly appointed representative.

Scope of protectionGenerally, the key to determining eligibility fortrademark protection is whether the proposedmark is capable of serving a sourceidentification function by distinguishing thetrademark holder’s goods from those of others.

Potential trademarks are generallycategorised in five levels of distinctiveness in


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ascending order of strength:• generic terms;• descriptive marks;• suggestive marks;• arbitrary marks; and• fanciful marks.

Generic terms (ie, words which aresynonymous with the underlying product orservice) are not entitled to registration orprotection as trademarks. Merely descriptivemarks (ie, marks which describe characteristicof the goods or services) may be entitled totrademark registration or protection upon ashowing of secondary meaning. Secondarymeaning is achieved when, in the minds of thepublic, the primary significance of the mark isto identify the source of the product.Suggestive, arbitrary and fanciful marks mayqualify for protection without proof ofsecondary meaning.

Trademark protection will also be deniedwhere the mark:• is confusingly similar to or dilutes a prior

registered mark;• is geographically descriptive or misleading;• is merely a surname;• creates a false association with a person;• is immoral or scandalous;• is merely ornamental; or• features governmental symbols or insignia.

However, a trademark can consist ofanything that can be used to indicate thesource of goods or services. Words, logos, non-functional product packaging, designs, pictures,slogans, colours, shapes, scents or sounds canall function and be registered as trademarksand service marks. Where the proposed mark isnot inherently distinctive, the applicant mustdemonstrate that the proposed mark hasacquired secondary meaning.

4. Procedures

ExaminationAll trademark applications are examined todetermine that:• all procedural requirements have been

satisfied; • there are no conflicting prior filed or

registered marks;• the mark is entitled to registration based

on the criteria discussed above; and• the mark is in actual use.

Currently, the initial examination period atthe US Patent and Trademark Office (USPTO)takes approximately three to seven monthsfrom the application filing date, assuming thatno issues are raised during examination.

If the examining attorney determines thatthe trademark application is not entitled toregistration, the examining attorney will issuean office action advising the applicant of anyperceived deficiencies regarding theapplication and whether these deficiencies canbe corrected or addressed. Currently,approximately 80% of all applications receiveoffice actions.

Applicants are afforded an opportunity toamend the application or respond to anysubstantive refusals regarding the application.An applicant has a non-extendable period of sixmonths to respond to an office action. If theexamining attorney’s objections are notresolved by the applicant’s response to the officeaction, a second office action may be issued andthe applicant will be afforded six months torespond to the office action. If the response tothe second office action fails to address theobjections to the examining attorney’ssatisfaction, a final refusal will be issued.

A final refusal of a trademark applicationmaybe appealed before the Trademark Trialand Appeal Board. To appeal a final refusal ofan application, the applicant must file a noticeof appeal and pay the appropriate fee withinsix months of the mailing date of the finalrefusal. An appeal brief must then be filedwithin 60 days of the USPTO receiving thenotice of appeal and fee.

OppositionIf the examining attorney determines that themark is entitled to registration, the mark willbe published in the Official Gazette. Any partywhich believes that it will suffer damage as aresult of registration of the mark has 30 daysfrom the publication date to file either anopposition to registration or a request for anextension of time to oppose. Extensions of upto 90 days may be granted without the




consent of the applicant. Thereafter, with theconsent of the applicant, an additional 60-dayextension of time to oppose the applicationmay also be granted.

The notice of opposition must state:• the grounds for opposition; and• the basis for the opposer’s belief that it will

be damaged by registration of the mark.

Any grounds that the USPTO could haveraised for refusing registration of the trademarkmay be cited as grounds for opposition.

Opposition proceedings are conductedbefore the Trademark Trial and Appeal Board.Opposition proceedings have procedures forfiling motions, conducting discovery andintroducing evidence at trial. In boardproceedings the parties submit trial briefs andintroduce evidence through testimonialdepositions and notices of reliance. Oralhearings before the board may be granted uponwritten request. Decisions in board proceedingsmay be appealed in any federal district court orin the Court of Appeals for the Federal Circuit.

Registration and maintenance ofregistrationsUnopposed use-based applications maygenerally proceed to registration. ‘Intent touse’-based applications cannot proceed toregistration without a demonstration that themark is being used in commerce. In such casesa notice of allowance is issued and a deadline isset by which use of the mark must bedemonstrated. Extensions of such deadlinesmay be granted in six-month increments onrequest. However, the total extensions may notaggregate more than 24 months in total.

All trademark registrations issued orrenewed on or after November 16 1989 remainin force for 10 years, provided that affidavits ofuse or excusable non-use are filed.Registrations issued before November 16 1989remain in force for 20 years, provided that anaffidavit or declaration of use or excusablenon-use was filed during the sixth year afterthe date of registration. Upon the periodicfiling of the required affidavit and payment ofthe prescribed fee, registrations may berenewed indefinitely for additional terms of 10years. Applications for renewal may be filedbetween one year prior to the registration’s

10th anniversary and six months after the 10thanniversary, subject to payment of theappropriate fees.

A trademark must be used in interstatecommerce in order to maintain theregistration. Evidence of use must be filed withthe USPTO between the fifth and sixth yearafter the issuance of the registration, and every10th year following registration. The USPTOprovides a six-month grace period for meetingthese requirements, subject to payment of anadditional fee.

Cancellation of registrationsTrademark registrations may be cancelled forfailure to meet the maintenance requirements orthrough petition by a third party. Cancellation oftrademarks registered for less than five yearsmay be sought on any grounds that could havebeen asserted to bar the initial trademarkapplication from registration. However,trademarks which have been registered for morethan five years can be cancelled only on specificgrounds enumerated in the statute (eg,genericism, abandonment or fraud).

The Trademark Trial and Appeal Boardadjudicates cancellation proceedings, whichhave various discovery procedures for filingmotions, conducting discovery andintroducing evidence at trial.

SearchesUpon submission of the initial application, theUSPTO conducts an initial examination todetermine whether the subject mark conflictswith any prior-filed applications or registeredmarks. The USPTO also maintains a searchabledatabase of federal trademark registrations andapplications on its website at www.uspto.gov.Although the USPTO does not provideinformation regarding state registrations orcommon law uses of marks, variouscommercial vendors offer comprehensivetrademark searches of the state registries, theInternet and various other databases todetermine common law usage of the marks.

5. Enforcement

Trademark rights may be enforced in eitherfederal or state courts. Causes of action may be




brought in the federal courts to enforce rightsin both registered and unregistered marks.With respect to the enforcement of trademarkrights in state courts, the statutoryrequirements, causes of actions and remediesvary from state to state. Most trademarkactions are litigated in the federal courts,although many plaintiffs elect to include bothfederal and state claims in these actions.

Under federal law, the Lanham Act providesseveral related causes of action with respect tothe enforcement of trademark rights.

InfringementAnyone that uses in commerce anyreproduction, counterfeit, copy or colourableimitation of a registered mark in connectionwith goods or services which is likely to causeconfusion may be liable for trademarkinfringement. To establish a claim oftrademark infringement, a plaintiff mustestablish:• ownership of a protectable trademark; and• that the defendant’s use of a junior mark

creates a likelihood of confusion with theprior mark.

DilutionThe Federal Trademark Dilution Act of 1995and the Trademark Dilution Revision Act of2006 protect owners of famous marks from:• blurring, which constitutes the erosion of

the distinctive quality of a mark; or• tarnishment, which constitutes the

unauthorised use of a mark in connectionwith inferior products or in anunwholesome or unsavoury manner.

False designation of originAnyone that uses any mark or other falsedesignation of origin in connection with anygoods or services which is likely to causeconfusion or mistake or deceive as to theorigin, source or sponsorship of certain goodsor services shall be liable in a civil action.

Cybersquatting and counterfeitingOther relevant US federal statutes include theAnti-cybersquatting Consumer Protection Act,the Trademark Counterfeiting Act of 1984 andthe Anti-counterfeiting and ConsumerProtection Act of 1996. The Anti-cybersquatting

Act provides remedies for bad-faithregistration, trafficking or use of domain nameswhich incorporate or are similar to trademarks.The Trademark Counterfeiting Act and the Anti-counterfeiting Act impose criminal and civilpenalties for intentionally trafficking incounterfeit goods. In counterfeit trademarkcases, a prevailing plaintiff may elect forstatutory damages or actual damages andprofits. Statutory damages may be awarded inan amount between $1,000 and $200,000 “percounterfeit trademark for each type of goods orservices sold” and, in cases of wilfulinfringement, in an amount up to $2 million“per counterfeit trademark per type of goods orservices sold” in addition to the legal fees andexpenses incurred in prosecuting the claim.

RemediesGenerally in infringement, unfair competitionand dilution actions, injunctive relief, monetarydamages and attorneys’ fees are available.Monetary damages may be awarded in the formof the defendant’s profits, the plaintiff’s actualdamages and the costs of the action. Underexceptional circumstances, courts may alsoaward treble damages and attorneys’ fees upon ademonstration of bad faith. Where a plaintiffcan demonstrate that the defendant’s actionscreate a threat of imminent and irreparableharm, the court may issue a temporaryrestraining order or preliminary injunction.

6. Ownership changes and rights transfers

Trademarks may be assigned provided that thetrademark is assigned along with the goodwillthat the trademark represents. Assignments orchanges in the ownership of registered marks canbe effectuated through the execution of a writtendocument memorialising the assignment orchange in ownership. While recordation ofassignments is permissive and not mandatory,recordation is strongly recommended:• to be protected against subsequent bona

fide purchasers;• to establish a clear chain of title; and• because recordation creates a prima facie

assumption as to the validity of the formof the assignment.In the United States, licensing of




trademarks is permitted. Trademark licencesneed not be recorded with the USPTO. However,US law requires that the trademark ownerexercise control over the use of the mark andquality control over the goods or services usedin connection with the licensed mark. Whilethere are no formal quality standards forlicensed goods or services, the trademark ownermust demonstrate that it has establishedstandards for quality control and that thetrademark owner sufficiently monitors thelicensed goods or services to ensure that thesestandards are met. Failure to exercise qualitycontrol over a licensee’s use of a mark canconstitute ‘naked licensing’ and can jeopardizethe validity of the trademark registration.

7. Related rights

Other forms of IP protection, such as copyright,patent rights or rights of publicity, may beavailable for certain types of trademark.Although the rights protected under copyright,patent and right of publicity laws are different,in some cases these rights can overlap withtrademark rights. For example, logos andadvertising slogans which qualify for trademarkprotection may also merit copyright protection,provided that such works meet the minimumstandards of creativity to merit copyrightprotection. Under the copyright laws, suchworks shall be protected from any unauthorisedcopying or distribution of works which aresubstantially similar to the protected work.Similarly, product configurations may qualifyfor both trademark and design patentprotection. New, non-obvious ornamentalproduct configurations maybe entitled to designpatent protection. In addition, names may beused as trademarks, but are also protectable bythe right of publicity or right of privacy. In theUnited States, the right of publicity or privacy isprotected under state law and varies from stateto state; it may protect an individual’s name,likeness, voice and persona.

8. Online issues

Trademarks are protected from various typesof infringement on the Internet. Examples of

online infringement include the unauthoriseduse of a trademark in connection with domainnames, metatags and the sale of trademarks bysearch engines as keywords in connection withweighted search results or in connection withthe strategic placement of sponsored links andbanner advertisements. The Anti-cybersquatting Act provides remedies for bad-faith registration, trafficking or use of internetdomain names which incorporate or aresimilar to trademarks. Moreover, the courtshave also held the unauthorised use oftrademarks in metatags or as keywords ininternet search engines do constitutetrademark infringement under the theory ofinitial interest confusion.




Protection for unregisteredrights?

Specific/increased protectionfor well-known marks?

Unregistered rights

Opposition procedureavailable? Term frompublication?

Opposition

Representative requires apower of attorney when filing?Legalised/notarised?

Examination for relativegrounds for refusal based on earlier rights?

Non-traditional marksregistrable?

Examination/registration

Can a registration be removedfor non-use? Term and startdate?

Are proceedings available toremove a mark that has become generic?

Are proceedings available toremove a mark that wasincorrectly registered?

Removal from register

Specialist IP/trademark court? Punitive damages available? Interim injunctions available?Time limit?

Enforcement

National anti-cybersquattingprovisions?

National alternative disputeresolution policy for localccTLD available?

Online issues

Mandatory registration forassignment/licensingdocuments?

Ownership changes

UDRP

TTAB has non-exclusivejurisdiction. ITC may resolvetrademark issues

Treble damages and attorney’sfees may be available

Within 30 days of publication,subject to extensions

Presumption after 3 years ofnon-use

Colours, non-functional productpackaging, shapes and factoryslogans, sounds


Contributor profilesDuane Morris LLP

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Duane Morris LLP1540 Broadway, New York,NY 10036-4086, United StatesTel +1 212 692 1000Fax +1 212 692 1020Web www.duanemorris.com

30 South 17th Street, Philadelphia,Pennsylvania 19103-4196, United StatesTel +1 215 979 1000Fax +1 212 692 1020

Lewis F Gould [email protected]

Lewis F Gould Jr chairs the IPpractice group of Duane MorrisLLP. He has focused his practicefor more than 40 years on IPlaw, with emphasis ondomestic and internationalpatent and trademark matters.He advises clients on a broadspectrum of patent and relatedissues in a variety oftechnologies. He also counselsclients on trademark andcopyright matters, includingclearance, registration andlitigation. He manages patentand trademark litigation beforethe US Patent and TrademarkOffice and in federal courts,locally and nationally.

Mr Gould is a graduate ofthe Dickinson School of Law. Hereceived his undergraduatedegree from Temple University,where he serves as a member ofthe board of trustees.

Gregory P GuliaPartner [email protected]

Gregory P Gulia has counselledclients on a broad range oftrademark issues. He has alsonegotiated countless trademark,entertainment and advertisingagreements, as well as licencesand purchases, and litigatednumerous complex trademark,trade dress, copyright, anti-counterfeiting, domain name,unfair competition, and rightsof publicity and privacy casesfor major media corporations,entertainers, luxury goodsmakers, fashion companies,international store chains andconsumer products companiesin courts throughout theUnited States.

Mr Gulia is a member of theInternational TrademarkAssociation Alternative DisputeResolution Committee. MrGulia is a graduate of West Pointand the University of MichiganLaw School, cum laude, wherehe was managing editor of theMichigan Journal ofInternational Law.

Vanessa C [email protected]

Vanessa C Hew concentratesher practice in the area of IPlitigation. Ms Hew has handledcomplex litigation for Fortune500 and other leadingcompanies involving a broadrange of claims, includingtrademark and trade dressinfringement, trademarkdilution, counterfeiting, falseadvertising and common lawunfair competition. She hasextensive experiencerepresenting clients in thefashion, personal care, food,music, film and publishingindustries in federal and statecourts throughout the UnitedStates and in proceedingsbefore the Trademark Trial andAppeal Board.

Ms Hew serves on theInternational TrademarkAssociation Emerging IssuesCommittee - Design RightsSubcommittee. She is agraduate of GeorgetownUniversity Law Centre andGeorgetown University.

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Contributor profilesDuane Morris LLP

Mitchell A FrankSpecial [email protected]

Mitchell A Frank practises in thearea of IP law, focusing on allaspects of trademark andcopyright counselling,including trademark clearance,enforcement and protection,licensing and trademark andcopyright aspects ofacquisitions and divestitures.Before joining Duane Morris,Mr Frank was assistant generalcounsel for commercial law andtrademarks at Unilever UnitedStates, Inc. He counselledUnilever management ontrademark maintenance,enforcement and protection,and unfair competition mattersand negotiated and draftedtrademark licence agreements.Before joining Unilever, MrFrank was global trademarkcounsel for Best Foods.

Mr Frank is a graduate ofSyracuse University College ofLaw, where he was lead articleseditor for the Syracuse LawReview, and Johns HopkinsUniversity.



World Trademark Review Yearbook: United States · · 2018-05-07non-traditional trademarks marks such as colour, ... filing of the required affidavit and payment of the prescribed

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