This article is the first in a series of articles to provide our readers with a broad overview of trademark law in the United States. We’re here to help you with protecting your company’s trademarks.
The topics the article series will cover include (1) the legal framework for trademark law in the United States, (2) the nature of trademark protection, (3) the acquisition and maintenance of trademark rights and registrations, (4) trademark enforcement and protection, (5) commercial use and exploitation of your trademarks, and (6) possible loss of trademark rights.
If you’re thinking about starting a company – in the technology industry or otherwise – it’s never too early to start thinking about and planning for the trademarks you would like to place on your company’s goods and/or services, and the countries where you hope to sell your goods and services, so you can begin the process of branding those goods and services among potential consumers. It takes a lot of time and money to do so, so you should work with your lawyer to develop a comprehensive trademark strategy as part of your company’s business plan.
Legal Framework for Trademark Protection in the United States and Abroad
A trademark represents one of several types of intellectual property (IP) protected by both federal and state laws across the United States. A trademark can be comprised of words and symbols that (1) identify a single source of origin for goods and services; (2) distinguishes the owner’s goods and services from those provided by others; and (3) provides the owner of the trademark with the right to prevent others from adopting similar trademarks likely to cause confusion in the marketplace.
Federal Law
At the federal level, the primary source of trademark protection is the Lanham Act (15 U.S.C. §§ 1051 to 1141n). U.S. Patent and Trademark Office (U.S. PTO) is the federal agency that administers the Lanham Act and regulates registration and maintenance of trademarks on the federal trademark register. The U.S. PTO’s headquarters’ offices are located in Washington D.C. It also maintains regional offices across the United States, including in Silicon Valley. The U.S. PTO trademark regulations appear in Title 37 of the Code of Federal Regulations (37 C.F.R. §§ 2.2 to 7.41). The U.S. PTO website provides legal and regulatory information, and procedural guidance on the federal trademark application process. The Trademark Manual of Examining Procedures (TMEP), published by the U.S. PTO, provides detailed information concerning the examination of a federal trademark application and registration of a trademark under federal law.
State Law
Trademarks are also protected at the state level by common law unfair competition statutes and case law, and state trademark statutes. California has a trademark registration statute that is substantially consistent with the registration provisions of the Lanham Act (Cal. Bus. & Prof. Code § 14207.) In California, trademark registration is controlled by the Trademark Unit of the California Secretary of State’s Office. California law allows for protection through registration of trademarks, service marks and trade names. (Cal. Bus. & Prof. Code § 14202.) Regardless of the distinction between a trademark and a service mark, California law allows the use of a trademark in connection with both goods and services. California’s trademark registration statute provides that a mark must be in use in California to be eligible for registration, and, unlike federal law, does not allow intent-to-use applications. (Cal. Bus. & Prof. Code 14207(a).)
International Considerations
Trademark rights are territorial in nature. Generally, rights in one jurisdiction do not give rise to rights in other jurisdictions. The United States is a party to certain international agreements that provide various benefits for U.S. companies seeking trademark protection outside of the U.S. and for foreign companies seeking protection in the U.S. They include the Paris Convention for the Protection of Industrial Property and the Madrid Protocol.
The Paris Convention is an international treaty created in 1883 requiring member countries to adopt certain minimum legal protections for industrial property, which covers most types of IP, including patents trademarks and trade names, but does not cover copyrights. Each member country must extend the same protections it gives its own nationals for covered IP to nationals of other member countries. An applicant for patent, trademark, or trade name in one member country may use that application as the basis for filing later applications for that IP in other member countries. The U.S. joined the Paris Convention in 1887.
The Madrid Protocol is a multi-national trademark registration system administered by the World Intellectual Property Organization (WIPO). Under the Protocol, instead of having to file a separate application for trademark registration in each individual Madrid Protocol country that conforms to that country’s requirements, a trademark owner may file a single international application in its home country’s trademark office. The home country’s trademark office forwards the application to WIPO’s International Bureau, which then submits the application to each designated Madrid Protocol country’s trademark office. Each national trademark office then examines the application in accordance with domestic law as if it had been submitted through that country’s regular channels and determines whether protection is available for the mark in that country. The treaty was implemented in the US under the Madrid Protocol Implementation Act of 2002. If your company has aspirations to sell its goods or services in one or more foreign jurisdictions, you should consider registering your trademarks via the Madrid Protocol.
About Finkel Law Group
Finkel Law Group, with offices in San Francisco and Oakland, has more than 25 years of experience helping our clients navigate registration of their trademarks through the U.S. Trademark Office, licensing those trademarks for commercial gain, and enforcing trademark rights in administrative proceedings before the TTAB and in federal court. When you need intelligent, insightful, conscientious and cost-effective legal counsel to assist you in understanding new laws that may affect your company’s intellectual property rights, please contact us at (415) 252-9600, (510) 344-6601, or info@finkellawgroup.com to speak with one of our attorneys about your matter.