United States

Contributing firm Duane Morris LLP

Authors • the Counterfeiting Act of 1984. Lewis F Gould, Jr, Gregory P Gulia, Vanessa C Hew and Mitchell A Frank Trademark rights in the United States are not exclusively governed by federal law. State trademark statutes and common law provide 1. Legal framework overlapping protection regarding the registration and enforcement of . Federal and state protection However, the requirements and scope of state In the United States, trademark law is governed trademark protection vary by state. Generally, by federal and state law. Federal trademark law federal trademark law does not pre-empt state is governed by the Lanham Act, which governs trademark law unless a conflict exists between the scope of trademark use, registration, federal and state law. protection and enforcement. Other federal statutes governing trademark use include: International treaties • the Federal Act of 1995 The United States is a signatory to: and the Trademark Dilution Revision Act of • the Paris Convention; 2006; • the North American Free Trade Agreement; • the Anti- Consumer • the General Agreement on Tariffs and Trade; Protection Act of 1999; • the Agreement on Trade-Related Aspects of • the Anti-counterfeiting and Consumer Intellectual Rights; Protection Act of 1996; and • the Madrid Protocol; and www.WorldTrademarkReview.com 313 United States Duane Morris LLP

• the Singapore Treaty on the Law of liable in a civil action. The Lanham Act also Trademarks. protects unregistered trademarks from dilution. However, the protection of unregistered marks The Madrid Protocol is an international may be limited to the geographical area where treaty that allows a trademark owner to seek the unregistered mark has been in actual use or registration in any of the signatory countries has acquired recognition. which have joined the protocol by means of a single international application. On October 1 2008 the United States 3. Registered marks ratified the Singapore Treaty, which was the first international instrument to recognise Federal trademarks registered on the Principal non-traditional trademarks marks such as Register are entitled to several benefits, colour, sound, three-dimensional, olfactory, including: taste and touch marks. The Singapore Treaty • a legal presumption of the registrant’s also addressed: ownership of and exclusive right to use the • the form and means of transmittal of mark; communications with trademark registries • federal jurisdiction over an action of the signatory nations and authentication concerning the mark; of signatures; • incontestable status of the registration • relief when an applicant or a holder has upon fulfilment of certain requirements; missed a deadline in connection with a and procedural action; and • the ability to prevent importation of • issues relating to the recording of infringing foreign goods. trademark licences. Requirements for registration An application to register a mark must be filed 2. Unregistered marks by the owner of the mark or, with respect to ‘intent to use’ applications, by the party which In the United States, trademark rights are itself (or via a licensee) has bona fide intent to conferred through use. Federal registration of a use the mark. Trademark registrations may be trademark will be granted only upon a owned by individuals or entities. demonstration of bona fide use of the trademark in connection with the relevant Representative of applicant goods or services in interstate commerce. Provided that no other attorney or law firm Under federal law, unregistered marks are has previously been appointed as a afforded trademark protection provided that representative, it is unnecessary for an such trademarks have been used in interstate attorney to file a power of attorney or any commerce or in foreign commerce with the other document authorising his or her United States. However, the commercial use of appointment as the owner’s representative. the mark must be in the ordinary course of Generally, any attorney who meets the trade. Use of an unregistered mark solely for statutory requirements and appears in person the purpose of reserving rights is insufficient or files a document on behalf of the owner will to confer trademark protection. be accepted as a duly appointed representative. Under the Lanham Act, the owner of an unregistered trademark is protected against Scope of protection infringement and dilution of the mark by Generally, the key to determining eligibility for others. Section 43(a) of the Lanham Act provides trademark protection is whether the proposed that anyone that uses any mark or false mark is capable of serving a source designation of origin in connection with any identification function by distinguishing the goods or services that is likely to cause trademark holder’s goods from those of others. confusion, mistake or deception as to the source Potential trademarks are generally or sponsorship of goods or services shall be categorised in five levels of distinctiveness in

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ascending order of strength: registered marks; • generic terms; • the mark is entitled to registration based • descriptive marks; on the criteria discussed above; and • suggestive marks; • the mark is in actual use. • arbitrary marks; and • fanciful marks. Currently, the initial examination period at the US and Trademark Office (USPTO) Generic terms (ie, words which are takes approximately three to seven months synonymous with the underlying product or from the application filing date, assuming that service) are not entitled to registration or no issues are raised during examination. protection as trademarks. Merely descriptive If the examining attorney determines that marks (ie, marks which describe characteristic the trademark application is not entitled to of the goods or services) may be entitled to registration, the examining attorney will issue trademark registration or protection upon a an office action advising the applicant of any showing of secondary meaning. Secondary perceived deficiencies regarding the meaning is achieved when, in the minds of the application and whether these deficiencies can public, the primary significance of the mark is be corrected or addressed. Currently, to identify the source of the product. approximately 80% of all applications receive Suggestive, arbitrary and fanciful marks may office actions. qualify for protection without proof of Applicants are afforded an opportunity to secondary meaning. amend the application or respond to any Trademark protection will also be denied substantive refusals regarding the application. where the mark: An applicant has a non-extendable period of six • is confusingly similar to or dilutes a prior months to respond to an office action. If the registered mark; examining attorney’s objections are not • is geographically descriptive or misleading; resolved by the applicant’s response to the office • is merely a surname; action, a second office action may be issued and • creates a false association with a person; the applicant will be afforded six months to • is immoral or scandalous; respond to the office action. If the response to • is merely ornamental; or the second office action fails to address the • features governmental symbols or insignia. objections to the examining attorney’s satisfaction, a final refusal will be issued. However, a trademark can consist of A final refusal of a trademark application anything that can be used to indicate the maybe appealed before the Trademark Trial source of goods or services. Words, , non- and Appeal Board. To appeal a final refusal of functional product packaging, designs, pictures, an application, the applicant must file a notice slogans, colours, shapes, scents or sounds can of appeal and pay the appropriate fee within all function and be registered as trademarks six months of the mailing date of the final and service marks. Where the proposed mark is refusal. An appeal brief must then be filed not inherently distinctive, the applicant must within 60 days of the USPTO receiving the demonstrate that the proposed mark has notice of appeal and fee. acquired secondary meaning. Opposition If the examining attorney determines that the 4. Procedures mark is entitled to registration, the mark will be published in the Official Gazette . Any party Examination which believes that it will suffer damage as a All trademark applications are examined to result of registration of the mark has 30 days determine that: from the publication date to file either an • all procedural requirements have been opposition to registration or a request for an satisfied; extension of time to oppose. Extensions of up • there are no conflicting prior filed or to 90 days may be granted without the www.WorldTrademarkReview.com 315 United States Duane Morris LLP

consent of the applicant. Thereafter, with the 10th anniversary and six months after the 10th consent of the applicant, an additional 60-day anniversary, subject to payment of the extension of time to oppose the application appropriate fees. may also be granted. A trademark must be used in interstate The notice of opposition must state: commerce in order to maintain the • the grounds for opposition; and registration. Evidence of use must be filed with • the basis for the opposer’s belief that it will the USPTO between the fifth and sixth year be damaged by registration of the mark. after the issuance of the registration, and every 10th year following registration. The USPTO Any grounds that the USPTO could have provides a six-month grace period for meeting raised for refusing registration of the trademark these requirements, subject to payment of an may be cited as grounds for opposition. additional fee. Opposition proceedings are conducted before the Trademark Trial and Appeal Board. Cancellation of registrations Opposition proceedings have procedures for Trademark registrations may be cancelled for filing motions, conducting discovery and failure to meet the maintenance requirements or introducing evidence at trial. In board through petition by a third party. Cancellation of proceedings the parties submit trial briefs and trademarks registered for less than five years introduce evidence through testimonial may be sought on any grounds that could have depositions and notices of reliance. Oral been asserted to bar the initial trademark hearings before the board may be granted upon application from registration. However, written request. Decisions in board proceedings trademarks which have been registered for more may be appealed in any federal district court or than five years can be cancelled only on specific in the Court of Appeals for the Federal Circuit. grounds enumerated in the statute (eg, genericism, abandonment or fraud). Registration and maintenance of The Trademark Trial and Appeal Board registrations adjudicates cancellation proceedings, which Unopposed use-based applications may have various discovery procedures for filing generally proceed to registration. ‘Intent to motions, conducting discovery and use’-based applications cannot proceed to introducing evidence at trial. registration without a demonstration that the mark is being used in commerce. In such cases Searches a notice of allowance is issued and a deadline is Upon submission of the initial application, the set by which use of the mark must be USPTO conducts an initial examination to demonstrated. Extensions of such deadlines determine whether the subject mark conflicts may be granted in six-month increments on with any prior-filed applications or registered request. However, the total extensions may not marks. The USPTO also maintains a searchable aggregate more than 24 months in total. database of federal trademark registrations and All trademark registrations issued or applications on its website at www.uspto.gov. renewed on or after November 16 1989 remain Although the USPTO does not provide in force for 10 years, provided that affidavits of information regarding state registrations or use or excusable non-use are filed. common law uses of marks, various Registrations issued before November 16, 1989 commercial vendors offer comprehensive remain in force for 20 years, provided that an trademark searches of the state registries, the affidavit or declaration of use or excusable Internet and various other databases to non-use was filed during the sixth year after determine common law usage of the marks. the date of registration. Upon the periodic filing of the required affidavit and payment of the prescribed fee, registrations may be 5. Enforcement renewed indefinitely for additional terms of 10 years. Applications for renewal may be filed Trademark rights may be enforced in either between one year prior to the registration’s federal or state courts. Causes of action may be

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brought in the federal courts to enforce rights registration, trafficking or use of domain names in both registered and unregistered marks. which incorporate or are similar to trademarks. With respect to the enforcement of trademark The Trademark Counterfeiting Act and the Anti- rights in state courts, the statutory counterfeiting Act impose criminal and civil requirements, causes of actions and remedies penalties for intentionally trafficking in vary from state to state. Most trademark counterfeit goods. In counterfeit trademark actions are litigated in the federal courts, cases, a prevailing plaintiff may elect for although many plaintiffs elect to include both statutory damages or actual damages and federal and state claims in these actions. profits. Statutory damages may be awarded in Under federal law, the Lanham Act provides an amount between $1,000 and $200,000 “per several related causes of action with respect to counterfeit trademark for each type of goods or the enforcement of trademark rights. services sold” and, in cases of wilful Infringement infringement, in an amount up to $2 million Anyone that uses in commerce any “per counterfeit trademark per type of goods or reproduction, counterfeit, copy or colourable services sold” in addition to the legal fees and imitation of a registered mark in connection expenses incurred in prosecuting the claim. with goods or services which is likely to cause confusion may be liable for trademark Remedies infringement. To establish a claim of Generally in infringement, unfair competition , a plaintiff must and dilution actions, injunctive relief, establish: monetary damages and attorneys’ fees are • ownership of a protectable trademark; and available. Monetary damages may be awarded • that the defendant’s use of a junior mark in the form of the defendant’s profits, the creates a likelihood of confusion with the plaintiff’s actual damages and the costs of the prior mark. action. Under exceptional circumstances, courts may also award treble damages and Dilution attorneys’ fees upon a demonstration of bad The Federal Trademark Dilution Act of 1995 faith. Where a plaintiff can demonstrate that and the Trademark Dilution Revision Act of the defendant’s actions create a threat of 2006 protect owners of famous marks from: imminent and irreparable harm, the court may • blurring, which constitutes the erosion of issue a temporary restraining order or the distinctive quality of a mark; or preliminary injunction. • tarnishment, which constitutes the unauthorised use of a mark in connection with inferior products or in an 6. Ownership changes and rights transfers unwholesome or unsavoury manner. Trademarks may be assigned provided that the False designation of origin trademark is assigned along with the goodwill Anyone that uses any mark or other false that the trademark represents. Assignments or designation of origin in connection with any changes in the ownership of registered marks goods or services which is likely to cause can be effectuated through the execution of a confusion or mistake or deceive as to the written document memorialising the origin, source or sponsorship of certain goods assignment or change in ownership. While or services shall be liable in a civil action. recordation of assignments is permissive and not mandatory, recordation is strongly Cybersquatting and counterfeiting recommended: Other relevant US federal statutes include the • to be protected against subsequent bona Anti-cybersquatting Consumer Protection Act, fide purchasers; the Trademark Counterfeiting Act of 1984 and • to establish a clear chain of title; and the Anti-counterfeiting and Consumer • because recordation creates a prima facie Protection Act of 1996. The Anti-cybersquatting assumption as to the validity of the form Act provides remedies for bad-faith of the assignment. www.WorldTrademarkReview.com 317 United States Duane Morris LLP

In the United States, licensing of of infringement on the Internet. Examples of trademarks is permitted. Trademark licences online infringement include the unauthorised need not be recorded with the USPTO. However, use of a trademark in connection with domain US law requires that the trademark owner names, metatags and the sale of trademarks by exercise control over the use of the mark and search engines as keywords in connection with quality control over the goods or services used weighted search results or in connection with in connection with the licensed mark. While the strategic placement of sponsored links and there are no formal quality standards for banner advertisements. The Anti- licensed goods or services, the trademark owner cybersquatting Act provides remedies for bad- must demonstrate that it has established faith registration, trafficking or use of internet standards for quality control and that the domain names which incorporate or are trademark owner sufficiently monitors the similar to trademarks. Moreover, the courts licensed goods or services to ensure that these have also held the unauthorised use of standards are met. Failure to exercise quality trademarks in metatags or as keywords in control over a licensee’s use of a mark can internet search engines do constitute constitute ‘naked licensing’ and can jeopardize trademark infringement under the theory of the validity of the trademark registration. initial interest confusion.

7.

Other forms of IP protection, such as , patent rights or rights of publicity, may be available 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 with trademark rights. For example, logos and advertising slogans which qualify for trademark protection may also merit copyright protection, provided that such works meet the minimum standards of creativity to merit copyright protection. Under the copyright laws, such works shall be protected from any unauthorised copying or distribution of works which are substantially similar to the protected work. Similarly, product configurations may qualify for both trademark and design patent protection. New, non-obvious ornamental product configurations maybe entitled to design patent protection. In addition, names may be used as trademarks, but are also protectable by the right of publicity or right of privacy. In the United States, the right of publicity or privacy is protected under state law and varies from state to state; it may protect an individual’s name, likeness, voice and persona.

8. Online issues

Trademarks are protected from various types

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Examination/registration

Representative requires a Examination for relative Non-traditional marks power of attorney when filing? grounds for refusal based registrable? Legalised/notarised? on earlier rights?

Colours, non-functional product packaging, shapes and factory slogans, sounds

Unregistered rights Opposition

Protection for unregistered Specific/increased protection Opposition procedure rights? for well-known marks? available? Term from publication?

Within 30 days of publication, subject to extensions

Removal from register

Can a registration be removed Are proceedings available to Are proceedings available to for non-use? Term and start remove a mark that has remove a mark that was date? become generic? incorrectly registered?

Presumption after 3 years of non-use

Enforcement

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

TTAB has non-exclusive Treble damages and attorney’s jurisdiction. The ITC may resolve fees may be available trademark issues

Ownership changes Online issues

Mandatory registration for National anti-cybersquatting National alternative dispute assignment/licensing provisions? resolution policy documents? for local ccTLD available?

UDRP

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Duane Morris LLP 1540 Broadway, New York, 30 South 17th Street, Philadelphia, NY 10036-4086, United States Pennsylvania 19103-4196, United States Tel +1 212 692 1000 Tel +1 215 979 1000 Fax +1 212 692 1020 Fax +1 212 692 1020 Web www.duanemorris.com

Lewis F Gould Jr Gregory P Gulia Vanessa C Hew Partner Partner Partner [email protected] [email protected] [email protected]

Lewis F Gould Jr chairs the IP Gregory P Gulia has counselled Vanessa C Hew concentrates practice group of Duane Morris clients on a broad range of her practice in the area of IP LLP. He has focused his practice trademark issues. He has also litigation. Ms Hew has handled for more than 40 years on IP negotiated countless trademark, complex litigation for Fortune law, with emphasis on entertainment and advertising 500 and other leading domestic and international agreements, as well as licences companies involving a broad patent and trademark matters. and purchases, and litigated range of claims, including He advises clients on a broad numerous complex trademark, trademark and spectrum of patent and related trade dress, copyright, anti- infringement, trademark issues in a variety of counterfeiting, domain name, dilution, counterfeiting, false technologies. He also counsels unfair competition, and rights advertising and common law clients on trademark and of publicity and privacy cases unfair competition. She has copyright matters, including for major media corporations, extensive experience clearance, registration and entertainers, luxury goods representing clients in the litigation. He manages patent makers, fashion companies, fashion, personal care, food, and trademark litigation before international store chains and music, film and publishing the US Patent and Trademark consumer products companies industries in federal and state Office and in federal courts, in courts throughout the courts throughout the United locally and nationally. United States. States and in proceedings Mr Gould is a graduate of Mr Gulia is a member of before the Trademark Trial and the Dickinson School of Law. He the International Trademark Appeal Board. received his undergraduate Association Alternative Dispute Ms Hew serves on the degree from Temple University, Resolution Committee. Mr International Trademark where he serves as a member of Gulia is a graduate of West Point Association Emerging Issues the board of trustees. and the University of Michigan Committee - Design Rights Law School, cum laude , where Subcommittee. She is a he was managing editor of the graduate of Georgetown Michigan Journal of University Law Centre and International Law . Georgetown University.

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Mitchell A Frank Special counsel [email protected]

Mitchell A Frank practises in the area of IP law, focusing on all aspects of trademark and copyright counselling, including trademark clearance, enforcement and protection, licensing and trademark and copyright aspects of acquisitions and divestitures. Before joining Duane Morris, Mr Frank was assistant general counsel for commercial law and trademarks at Unilever United States, Inc. He counselled Unilever management on trademark maintenance, enforcement and protection, and unfair competition matters and negotiated and drafted trademark licence agreements. Before joining Unilever, Mr Frank was global trademark counsel for Best Foods. Mr Frank is a graduate of Syracuse University College of Law, where he was lead articles editor for the Syracuse Law Review, and Johns Hopkins University.

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