Use is a key factor to protect a trademark in the US
In the United States rights in a trademark stem from the actual use of the mark, not from registration. It therefore doesn’t make much sense to protect a mark that is not used and is not going to be used in the near future in the US. The US Trademark Law (The Lanham Act) offers several options to file a trademark application, according to the use made or use that will be made.
There are two ways of protecting a trademark: as a national trademark, at the US Patent and Trademark Office (USPTO), or as an international trademark, at the World Intellectual Property Organization (WIPO), since the United States has been a party to the Madrid Protocol since November 2, 2003. We refer briefly to the two procedures below.
National Trademark Application
Trademark applications filed at the USPTO must be based on at least one of the following sections of the US trademark law:
- Current use in commerce (pursuant to section 1.a). The trademark is already being used in commerce in the US.
- Intent to use (pursuant to section 1.b). The owner requesting registration undertakes to use the mark in the US in the immediate future.
- Registration based on a trademark registration in the country of origin of the owner (“home registration”) (pursuant to 44.e). In this case it is necessary for the owner to have already registered the mark at the “home” IP Office (for example, a Spanish or Community trademark in the case of a Spanish owner).
Once the application has been filed, it is reviewed by the USPTO and if no objections arise to its registration, it is published for opposition by third parties. If no party files an opposition or request to extend the time to oppose within 30 days from publication, a notice of allowance is issued.
If the application was filed in accordance with the first option (current use) or third option (national registration), a certificate of registration is issued. In the case of the second option (intent to use), a statement of use must be submitted for the grant to be final.
International trademark application
Since the United States has been a member of the Madrid Protocol since 2003, it is possible to file a new international trademark application, designating the US, based on a Spanish or Community trademark application or registration. Owners of international trademarks can also designate the US subsequently.
It should be underscored that once an international application enters the national stage at the USPTO, some type of office action is usually issued. Although the applicant may respond to the office action directly, the USPTO recommends hiring a US trademark attorney, since US practice is quite complex, as regards formal requirements.
Each of these options has its advantages and disadvantages which need to be analyzed case by case. However, generally speaking, international registration is the best option when the aim is to protect the mark in two countries, whereas a US trademark registration is better if the trademark owner is only interested in this territory.
In both cases we should underscore that use is an essential requirement for the validity of the mark in the United States; if it has not been used the trademark cannot be relied on in the case of a potential infringement.
This article is an extract from the original, published in our Fashion Law newsletter in July.
Natalia Ruiz Gallegos
Garrigues Intellectual Property Department