What is a trademark?
A trademark is generally a word, phrase, symbol, or design, or a combination of these elements, that identifies and distinguishes the source of one party's goods from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than goods. The terms "trademark" or "mark" are commonly used to refer to both trademarks and service marks. Although federal registration of a mark is not mandatory, it has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods and/or services listed in the registration.
How long does a trademark registration last?
A trademark registration may remain in force for potentially unlimited consecutive ten-year periods as long as the owner meets the legal requirements for post-registration maintenance and renewal and timely files all necessary documents. The owner must file a "Declaration of Use" between the fifth and sixth year following registration, attesting to the continued use or excusable nonuse of the mark on or in connection with the goods and/or services in the registration. In addition, the owner must file a combined Declaration of Use (or Excusable Nonuse) and Application for Renewal between the ninth and tenth year after registration, and every 10 years thereafter, attesting to the continued use or excusable nonuse of the mark on or in connection with the goods and/or services in the registration and requesting to renew the registration. If these documents are not timely filed, the registration will expire or be cancelled and cannot be revived or reinstated. For more information, including the different renewal requirements for Madrid Protocol-based registrations, see Maintain/Renew a Registration.
What if the trademark registration expired or was cancelled?
Even if a trademark registration expires or is cancelled, the trademark owner may continue to have "common law" rights in the mark. Federal registration typically does not create rights in a mark but rather confers benefits and protections in addition to rights established by common law. Common law rights arise from actual use of a mark for particular goods or services and may allow the common law user to successfully challenge another party's use in court.
How do I know whether I'm infringing?
To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties' marks. When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings.
Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties' goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include how and where the parties' goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.
The particular factors considered in a likelihood-of-confusion determination, as well as the weighing of those factors, vary from case to case. And the amount and quality of the evidence involved can have a significant impact on the outcome of an infringement lawsuit.
In addition to claiming likelihood of confusion, a trademark owner may claim trademark "dilution," asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner's mark by "blurring" the mark's distinctiveness or "tarnishing" the mark's image by connecting it to something distasteful or objectionable-even if there is no likelihood of confusion.
An experienced U.S.-licensed trademark attorney, taking the particular circumstances of your case into consideration, should be able to provide you with an opinion as to the validity and strength of a trademark owner's claims.
How can I challenge a trademark registration or application?
Several options exist to challenge another party's trademark registration or application, depending on the particular circumstances and grounds for challenging:
- You may challenge a trademark registration issued by the USPTO by filing a petition to cancel the registration with the Trademark Trial & Appeal Board (TTAB).
- You may challenge an application for trademark registration at the USPTO by filing an opposition with the TTAB within 30 days after it is published in the Official Gazette.
- You may file a declaratory judgment lawsuit, asking a court to declare that your mark does not infringe the trademark owner's mark, and/or that the trademark owner's mark is invalid.
- If you are already a defendant in an infringement lawsuit, you may assert an "affirmative defense" and/or a counterclaim against the plaintiff challenging the validity of the plaintiff's trademark.
Again, a U.S.-licensed attorney with trademark expertise can help advise you about the various options available to challenge trademark registrations and applications. Please see the "Do I need an attorney?" section for further information.
McCarthy on Trademarks & Unfair Competition (4th ed. 2014)
Trademark Manual of Examining Procedure (Apr. 2014)
Basic Facts About Trademarks (2012)
The information presented on this site does not constitute legal advice. It should not be considered to replace advice from an attorney. Reference to any specific organizations, attorneys, law firms, corporations, or websites does not constitute the USPTO's endorsement or recommendation.
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