This blog is fourth in a series of articles that Finkel Law Group has published to provide our readers with a broad overview of trademark law in the United States.
The legal rights your company secures in the trademarks its uses for the goods and services you sell to consumers are subject to certain maintenance requirements to preserve the common law rights under state law and the registrations rights under the federal Lanham Act. Your company must consistently take steps to maintain the common law and statutory legal rights in its trademarks or you risk losing them, which may be incredibly detrimental given all of the time, effort and money you have expended to build your company’s brands.
Maintaining the Common Law Rights in Your Marks
Trademark rights in the U.S. do not require registration of the mark with the U.S. Trademark Office. The rights arise automatically from using a trademark in commerce in connection with a good or service. These unregistered trademark rights are known as common law rights. Your company can assert claims for trademark infringement and unfair competition based on the common law legal rights in its trademarks under Section 43(a) of the Lanham Act. Your company’s common law rights in its trademarks are maintained through bona fide use of the marks in commerce as a source identifier for the goods or services your company provides under those marks. To prove ownership of common law trademark rights, your company must be able to show it’s using the mark in interstate commerce, and the mark is distinctive, either inherently or because its acquired distinctiveness through your use of the mark in commerce.
Absent federal registration, common law rights in a trademark are generally limited to the geographic area in which the mark is used. The technical legal requirements for registration generally apply when assessing whether use of a mark qualifies for common law trademark protection. But when assessing the existence of common law trademark rights, a court will place greater emphasis on the quantity and the prominence of the use. Use of a mark to support common law trademark rights must be deliberate and continuous, and not sporadic, casual, or transitory. A court will also assess the geographic scope of your use of the mark because your company’s common law trademark rights are limited to the geographic areas where you’re actually using the mark in commerce.
To be protectable as a trademark, a term must also be distinctive. Distinctiveness means the mark identifies a good or service as originating from a single source. Distinctiveness is evaluated along a continuum ranging from highly distinctive marks to terms that cannot be protected because they are generic for the category or type of goods or services.
The five categories of distinctiveness are: (1) fanciful, (2) arbitrary, (3) suggestive, (4) descriptive, and (5) generic. Fanciful, arbitrary, and suggestive marks (considered inherently distinctive) can immediately identify the source of a specific product or service. Inherently distinctive marks can be registered on the Trademark Office’s principal register without showing they are recognized as identifying the source of a good or service. Descriptive terms can be protected as trademarks only after they acquire distinctiveness, or secondary meaning, through use in commerce. Generic terms are never entitled to trademark protection.
It is also important to keep in mind that non-use of a common law trademark may result in abandonment of the mark and loss of all common law rights in the mark. Moreover, trademark rights can be weakened, or even lost, if the trademark owner misuses the trademark or fails to take appropriate action against third parties that infringe the mark or otherwise misuse the mark in some way; like affixing it to good or services that are not provided by the owner of the mark. Think counterfeiting.
Maintaining the Federal Trademark Registrations of Your Registered Marks
A federal trademark registration is maintained by continuous and consistent use of the mark in interstate commerce. Proper maintenance of your company’s marks also requires you to comply with certain registration maintenance formalities established by the U.S. Trademark Office. To keep a federal trademark registration in effect, you must periodically file documents with the U.S. Trademark Office, including
- (1) a declaration of continued use (or excusable non-use),
- (2) periodic renewal applications,
- (3) incontestability declarations,
- (4) corrections and amendments, and
- (5) recording all assignments.
Your company – or company counsel – must submit these documents to the Trademark Office through the Trademark Electronic Application System (“TEAS”).
A declaration of continued use
First, to keep your company’s federal trademark registration valid you must file a declaration of continued use, or excusable nonuse, under section 8 (or 71 for international registration recognized in the U.S.) of the Lanham Act. You must make this filing within one year before the end of the sixth year of registration and the tenth year of registration, and each successive ten year period after that. The filing must also be accompanied by a required fee. If you fail to file this declaration in a timely manner, your mark may be automatically cancelled, though any acquired common law rights will remain. You may also be able to file an application with the Trademark Office to revive your mark after cancellation, though this can be time consuming and costly.
Periodic renewal applications
Second, most trademark registrations must be renewed every 10 years. To do so, you must file a written renewal application with the Trademark Office via TEAS during the last year of each successive 10 year period for which the registration is issued or renewed, and pay the required fee. If you fail to do so, and don’t correct your error within the 6 month grace period, your registration will expire and you will lose your rights in the mark.
Incontestability declarations
Third, if your company’s trademark is registered on the Principal Register you may file a declaration of incontestability under section 15 of the Lanham Act to seek incontestable status for the mark. Such a declaration may be filed once the mark has been in continuous use in commerce for at least 5 consecutive years after the registration date. The declaration may be filed within one year after the expiration of any 5-year period of continuous use following registration. Incontestable status confers significant benefits on your trademarks. For example, an incontestable registration is, subject to certain exceptions, conclusive evidence of your exclusive right to use the mark for the goods or services listed in the registration. A trademark registered on the Supplemental Register is not eligible for incontestable status.
Corrections and amendments
Fourth, you should promptly report to the Trademark Office any mistakes in the certificate of registration. The Office issues a certificate of correction or, at its discretion, a new registration certificate if the error is due to a good faith mistake by the trademark owner and does not require republication sue to a material change. A fee is normally required unless the error is the Trademark Office’s fault. Keep in mind, however, that an error committed by the Trademark Office that requires a material change to the registration may require cancelled of registration on grounds it was inadvertently issued. So it’s important that your attorney keep close tabs on the examiner reviewing your trademark application.
Recording all assignments
Fifth, if ownership of a registered trademark changes – because, for instance, your company was acquired or acquired another company’s trademarks in a merger – the assignee should record an assignment with the Trademark Office and ask that the trademark register be updated. You may also wish to ask for a new certificate of each trademark registration issued in the new name. Through not required by law, a wise assignee (buyer) will record the assignment and update the Trademark Office’s records. Otherwise you run the risk that a competitor attempting to clear a similar mark may rely on outdated owner information when determining whether the registered mark is in use. Moreover, any renewal will list the previous owner, which you want to avoid as the acquirer of the mark.
If your company fails to file these documents in a timely manner you run the risk of losing all or a portion of the benefits of registering the trademarks with the Trademark Office in the first place. In a worst case situation, you also run the risk of your marks being cancelled, in which case your company has spent thousands of dollars building a brand around a mark that you no longer own or can use in interstate commerce. That’s a bad result of you and your company.
But don’t panic. It is important to keep in mind that the Trademark Office responds to deficiencies in post-registration filings by issuing office actions. Typically, the trademark owners – that’s you – has 6 months from issuance of the notice to respond to a post-registration office action. The time to respond may actually be longer if the time period for the deficient filing has not expired by the deadline set in the office action. So it’s important to keep close tabs on when an office action is issue and take the time to calculate the deadline by which a response is required.
If, after you file a response to an office action, the Trademark Office maintains its refusal to renew, you have 6 months to petition the Director of the Trademark Office to review the examiner’s decision. Only after the Director issues a decision can you file an administrative appeal with the Office or a civil action in federal court.
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.