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Lanham Act

Lanham Act



What is the Lanham Act?
The Lanham Act is a piece of legislation that was codified in 1946 that enacts federal regulations in the field of trademark law.  The Lanham Act is based on Congress’s ability to regulate goods traveling through interstate commerce under the commerce clause.  It provides for a national registration of trademarks and protects owners of trademarks from infringement from and the use of similar trademarks that would dilute the trademark or lead to confusion amongst consumers.  Prior to the Lanham Act there were State trademark laws but with the passage of the Act in 1946 there was finally a federal guideline.
There are 4 major provisions of the Lanham Act.  The first two subchapters deal with the registration of Trademarks.  The first subchapter entails the registration process and the various rights that are granted with the registration.  Subchapter II deals with the registration of certain marks that may not be registered under subchapter I.  This form of registration does not confer the same protections as those under Subchapter I but it does give limited protections including advance notice of trademark to potential infringers.  
Subchapter III of the Lanham Act deals primarily with remedies that accompany a finding of trademark infringement.  They are broken up into sections 42 and 43 of the act.  
What is a Trademark?
A Trademark, as defined by the United States Patent and Trademark Office, is defined as “a word, phrase, symbol, or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of another.” Famous Trademarks include the trademark “Nike” as well as the Nike “swoosh.” The trademarks help do distinguish Nike shoes from those of its competitors. 
Trademarks can also extend to distinguishing features of products including the shape and color of the product.  For example, the shape of a Coca-Cola bottle is highly distinguishable from other bottles on the market.  Trademark issues would arise if  for example, a competitor of Coca-cola were to manufacture a similar bottle and use that bottle to compete in the beverage market.  This would entail to confusion of the competing product with Coca-Cola and would likely lead to a Trademark infringement suit.
Why is it important to register a trademark?
It is not required by law to have a trademark registered with the Patent and Trademark Office but the registration does afford a number of protections.  Registration of the Trademark constitutes nationwide constructive notice to all potential infringers that the trademark is currently owned.  Registration also gives the party possessing the registered trademark the authority to sue for trademark infringement in a federal court.  The registration of a trademark also confers other benefits including increased damages in the case of infringement being found by a federal court.  
What encompasses a Trademark?
The Lanham Act provides certain pre-requisites in order for a trademark to receive federal protection.  In order to be a trademark, under federal law, a trademark must be distinctive.  The courts have grouped the categories of distinction into 4 groups based on the relationship of the mark with the underlying product.  These groups are: arbitrary and fanciful; suggestive; descriptive; or generic.
What are the categories of Trademarks?
The four categories of trademarks are arbitrary or fanciful; suggestive; descriptive; or generic.
An arbitrary or fanciful mark is one that bears no logical relationship to the underlying product.  These include trademarks such as “Apple,” “Nikon,” and “Panasonic.” These trademarks have no relationship to the underlying product.
A suggestive trademark is one where the trademark suggests a characteristic associated with its use.  The trademark “Poland Spring” suggests that the product is associated with water.
A descriptive mark requires secondary meaning that does more than associate the product with a general product or industry.  Descriptive marks are not inherently distinctive and are protected only if they have acquired secondary meaning.  The secondary meaning is acquired when the public at large begins to associate that trademark with a distinct service or good unlike others in the same industry.  For example, the trademark “iphone” has a secondary meaning  associated with a premium brand of cellular phones.
The final category of trademarks is the Generic category.  These types of products carry with them absolutely no trademark protection.  They are deemed to be too common in identifying specific categories of products that it would be a detriment to the public if those terms were allowed to be trademarked.  

What are the benefits of having a registered trademark?
As detailed in the Lanham Act, a trademark may be register in one of two ways.  By either using the mark in the stream of commerce or by registering the mark with the United States Patent and Trademark Office.  
The first method of obtaining a trademark involves the registration with the United States Patent and Trademark Office.  The ultimate protection associated with a registered trademark is that the once the trademark has been used for 5 consecutive years it is prima facie evidence of a trademark.  In this instance, any defendant in a trademark infringement suit cannot directly attack the plaintiff’s mark. A second important distinction is that, while an unregistered trademark is only valid in the region where it is used a registered trademark gives the trademark national recognition.
The second method of attaining a trademark is very straightforward.  It merely involves selling a product with a specific trademark in the stream of commerce.  Once that is accomplished an individual has met his/her obligations to have an enforceable Trademark.  However, there are differences.  Under a “common law” trademark; which is what an unregistered trademark is referred to, the trademark is only valid in the region that it is sold in.  Secondly, the protection associated with a registered trademark that has been in use for 5 continuous years does not apply to a common law trademark.
How do you register a Trademark?
A trademark is first registered by filing an application with the United States Patent and Trademark Office.  Once the trademark is filed it will be reviewed in the order in which it was received.  The application will then be reviewed by an attorney at the Patent and Trademark Office.  This could take fro 3-6 months to accomplish.  After the attorney has reviewed the application, if there are no issues, the trademark will be published.  At that point any party seeking to contest the application for a trademark must make any claims within 30 days.  If there is a petition filed against trademark then the case will go before a Trademark Trial and Appeal Board.  If there is not contention within 30 days then application will be processed and a valid trademark will be issued.  A trademark must be renewed every 10 years in order to maintain its validity.

Steps to Registering for a Trademark

Steps to Registering for a Trademark

 

 

Registering for a trademark is a multi-step process that is administered by the United States Patent Office. A trademark is a fundamental step in the development of one's business or nonprofit organizations. Trademarks enable a product to find a legal niche in an underlying marketplace, which can further establish the productivity of the good or service.

 

 

 

The first step in trade marking an item is to understand the different types and laws associated with intellectual property. A solid method to understand trademarks is to search the USPTO website and search for pending or existing trademarks for products similar to your own. After accomplishing this, draw up a statement identifying the services or goods that are attached to the trademark. Make sure the attachments are aligned with the Patent Offices "Acceptable Identification of Goods and Services Manual."

 
Once the attachments and the product have been chosen, design the mark you to register. There are two basic forms of styles: stylized or standard character format. Both styles require separate applications to receive a trademark. When the style has been chosen file a TEAS application online through the USPTO website. Once this has been accomplished the agency will review your application and if acceptable, grant a trademark for your specific product or service.

 
 
 

 

What You Must Know About Trademarks

What You Must Know About TrademarksTrademark law, along with
copyrights and patents, form an essential part of intellectual property law.
Trademarks are unique, however, and offer a more abstract form of intellectual
protection. Copyrights
 protect
tangible forms of expression, while patents
 protect inventions. Trademarks, on the
other hand, protect a company’s image in the public. Companies build up their
awareness in the public and consumers become familiar with their products and
what they have to offer. Trademarks prevent other companies from offering
similar products with identical images, and in turn, hurting the original
company’s image through consumer confusion. The reasoning behind trademark law
is to provide commercial entities the right to claim an identity within a
marketplace and to maintain it.


Trademarks themselves are symbols, logos, phrases, sounds, pictures or any
combination of these which help provide the public with an identifiable imagine
among the product. When a person buys a company’s product, the product has the
trademark on it, and the consumer is able to connect the quality of the product
with the company’s image. Trademark law is important in protecting the
company’s ability to establish their unique offerings, without it being
diluted, or confused with a similar logo. Trademark law enforces this by
allowing companies to file lawsuits against others who establish similar logos,
pictures, words, phrases, etc., along with identical products to capitalize on
another company’s successful image amongst the public.


The Background
of Trademark Law:


The earliest forms of trademarks have been in use for thousands of years.
Modern use of trademarks began during the 14th and 15th centuries, in which
merchants and craft guilds began to formulate monopolies in the production of
goods. Soon, people realized the importance of not only quality products, but a
quality image projected to the public.


As the United States economy reached new heights in the early to mid-20th
century, trademark law took a new meaning. Advertisements became a staple in
U.S. everyday life, helping to establish a company’s image with catch phrases,
symbols, logos, pictures and sounds. Trademarks and ways to protect them became
more important than ever. In an age where most consumers could not tell the
difference between an established trademark and one that was infringing upon
it, trademark law reached a new level of importance.


The Lanham Act of 1946 was soon put into effect in the post-war economy, and
protections against unfair competition and other trademark details came with
it. This act also introduced service marks for companies as marketing became an
essential aspect of successful business.

What is Trademark Law?


When a company is first established, it may formulate a company logo and a
catchphrase to go with it. This is done to help build an identity for the
company with the public. The company may also file the logo and catch phrase
with the United States Patent and Trademark Office to secure further rights in
the use of the logo and catchphrase. Though an unregistered trademark is
protected by intellectual property law, it is limited to only certain regions
of the United States. A registered trademark is valid nationwide, and unlike
copyrights and patents, which last only a limited amount of time, trademarks
can last indefinitely with continued renewal.


With a trademark established, the company may begin to offer the public quality
products. In time, the quality products will become synonymous with their logo
and catchphrase. When this has been accomplished, their trademark now has
equity to back it up and it becomes desirable. If another party comes along,
which offers similar products, and creates a logo overly similar to the first
company’s logo, a trademark infringement lawsuit may be brought up against the
emerging company. Trademark infringement occurs when a company offering similar
products has created a similar trademark with the intent on creating customer
confusion among the companies. As a result, the initial company’s reputation
may be damaged by another company’s inferior products. This gives the first
company the right to seek damages for such an event.


A company wishing to use a certain phrase or word may have their trademark
finalized by fixing a “TM” next to the mark. This shows that it has
been established but not yet registered. Also, any other company in another
region of the country may use the same mark. Any company wishing to use a
similar phrase or logo for their company should look for an encircled
“R”, which shows that a company has registered their trademark and
cannot be infringed upon without severe penalties.

Trademark Protection:


Trademarks give individuals, companies and other entities protection
over valuable intangible assets. These assets
can include names
, symbols, logos, phrases, sounds or any combination of these
which a company uses to present their products and services to the public.
Other entities are not allowed to create similar marks which may confuse the
average reasonable customer into thinking two unrelated products are from the
same company. Trademarks cannot be diluted either in an effort to devalue a
company’s name, product or image. Trademark laws have also updated to include
the protection of internet domain names
. Some trademarks may also lose their protection or be ineligible for a variety of reasons.

Trademark Registration


Trademark registration grants trademark owners an exclusive bundle of rights.
Once a trademark is registered with the United States Patents and Trademark
Office, that trademark can only be used by that person to sell their products
or services. Any trademarks that are too similar or have the intent of confusing
consumers will be denied registration and considered trademark infringement. A
trademark is considered to have an owner once it is used ni commerce even if t
is not registered. However, it is important to get a trademark registered
because it is difficult to prove who used it first and the first to get a
trademark registered will be the exclusive owner of the mark.

Trademark Infringement


Trademark infringement refers to the violation of rights offered to exclusive
trademark owners. Trademarks are owned once them have been used in commerce or
once they have been registered by the United States Patents and Trademark
Office (USPTO). Once a trademark is owned, only the owner can use it to make
profits or identify their company. A violation of trademark rights is illegal
and is actionable in civil court. The United States is currently operating
under the Lanham Act of 1946 which prohibits trademark infringement, trademark
dilution and false advertising. Trademark infringement takes place once there
has been a likelihood of confusion among consumers due to similarities between
trademarks.

Trademark Dilution Act of
1995


Trademark dilution is the blurring or tarnishment of a famous trademark. The
Trademark Dilution Act of 1995 stated only famous trademarks could sue another
entity for dilution of their trademark. When the public’s perception of a
company is blurred because their trademarks are too similar, dilution is taking
place. Also, if another company offers low quality goods or services while
using a trademark similar to a famous company’s, tarnishment is taking place. A
likelihood of confusion is not necessary for proving dilution has taken place.
A mere loss of uniqueness is enough to win a civil trial over trademark
dilution. The penalty for committing trademark dilution is most often just an
injunction against the use of the trademark causing the dilution of another.

Passing Off


Passing off is a common law tort covering the area of trademark law, to be
distinguished from statutory trademark infringement. Passing off refers to the
misuse of another good or service provider’s trademark to the end of confusing
or deceiving the public. This may occur by presenting one’s own products as
those of another provider with a reputation for high service, or by presenting
another provider’s products as one’s own creations. A case of passing off may
be dealt with in a civil suit, and does not confer rights of ownership related
to intellectual property. According to American common law, trademarks are
intended to indicate the source of a good or service, allow the source to
develop a favorable reputation for quality of services rendered, and allows the
availability of such services to become known. English common law administers
passing off torts according to the presence of elements referred to as the Classic
Trinity, comprising goodwill toward a service provider, misrepresentation
related to the service, and a consequent reduction in the goodwill.

Trademark Act of 1881


The Trademark Act of 1881 was the first federal statute to provide for the
protection of trademark rights within the United States. Congress enacted the
law based on its power Article 1, Section 8, Clause 3 of the Constitution to
regulate interstate commerce. The
Act allowed for the registration of trademarks in the United States as were
used in dealings with foreign nations or with Indian tribes. It allowed the
common law provisions which had long been in effect in individual states to
govern the protection of trademark rights within their borders. Trademarks
registered under this act could enjoy protection for periods of thirty years.

Lanham Act of 1946


The Lanham Act of 1946 is essentially the main core behind the United States
federal trademark laws. The law was signed by President Harry Truman on July 5,
1946, and enacted exactly one year from that date. The Lanham Act provides for
the federal statutes that govern all aspects of trademark law, such as federal
registration, restrictions and regulations, and international concurrence and
implications of international trademark laws. Though there has been federal
trademark legislation in place before its inception, the Lanham Act was the
first to accurately provide for the necessary provisions and be successful in
the regulations of trademark laws at an interstate level.

Trademark Dilution Act of
1995


The Trademark Dilution Act of 1995 provided for the first federal
considerations regarding a particular type of trademark violation, known as trademark
dilution. Trademark dilution is the use of trademark that may hinder or damage
the reputation of a famous trademark, regardless if the new mark is in direct
competition in the same product market or causes product confusion to
consumers. Before this new statute, trademark dilution was regulated by state
and local laws, and provided for their own considerations as to what would
constitute dilution. However, the need for a federal and cohesive application
of trademark dilution became necessary because only a total of 25 states had
laws implementing trademark protections against dilution. As the years passed
by, The Dilution Act would essentially be replaced in 2006, with the Trademark
Dilution Revision Act, signed into law on October of the same year, which would
amend and improve on many of the statutes and regulations of the first Dilution
Act.

Trademark Dilution Revision
Act of 2006


The Trademark Dilution Revision Act of 2006 arose out the confusion surrounding
the concept of trademark dilution. The provided guidelines in the Lanham Act of
1946 did consider provisions for dilution, however, they proved to be
inefficient in terms of enforcing them in legal disputes. State laws also
provided their own guidelines as to how to handle trademark dilution issues,
though not all states had actual legislation in place; only 25 states in the
United States had laws concerning trademark dilution. Therefore, the need for
an effective, cohesive, and comprehensive set of laws governing trademark
dilution became a necessity in order to effectively enforce those provisions;
the Revision Act set out to do exactly that by providing determinate
definitions and procedures to effectively enforce trademark dilution laws.

Anti Cybersquatting
Consumer Protection Act


The Anti Cybersquatting Consumer Protection Act was passed into United States
law in 1999 for the purpose of preventing abusive practices related to the
registration of domain names based on or similar to previously registered
trademarks. Legislators designed the law to address complaints about the use of
trademarks as domain names by people other than the original owners. The law
specified that “bad faith”shown in the registration of a domain name
could justify taking down a website and imposing damages.



An Overview of Trademark Names

An Overview of Trademark Names

When Can a Business Use Trademark Names?
In order for a business to trademark a name, the actual name should fulfill certain requirements. 
Brand names such as Nabisco, Kraft, and Dell are names that consumers see every day in stores and on marketing advertisement campaigns. Since they are easily recognizable, the companies which own them trademark them to protect their business efforts and consumers. 
When a consumer buys a Nabisco product, he or she knows what to expect from the product being purchased. Brand names cannot include generic names for products. For example, “Nike” is a brand name and a registered trademark, though “sneaker” or “shoe” would be the generic name that cannot be included in a trademark in any way.
Trademark Names for Copyrighted Work:

Works of authorship can usually be protected under intellectual property law through copyrights, though the title of the work cannot be copyrighted. It can, however, be trademarked. In order to be protected under a trademark, the title of a work must first have a secondary meaning. 
This means they must be commercially well-known to the public. Star Wars, for example, is a copyrighted work that is well-known to the public. As a result, it was able to obtain a trademark for the title, “Star Wars”. In most cases, a name is capable of being trademarked if it is a series of works rather than just a single work.
Trademark Names for Literary Characters:

Under certain circumstances, literary characters can also be trademarked, even if the character is part of a work is no longer copyrighted. If a work loses copyright protection, characters within it can maintain their trademark status to prevent others from using them once the work reaches public domain.

Lanham Act Text

Lanham Act Text

TITLE 15 – COMMERCE AND TRADE
CHAPTER 22 – TRADE-MARKS
SUBCHAPTER III – GENERAL PROVISIONS

Sec. 1114. Remedies; Infringement; Innocent Infringement By Printers And Publishers

(1) Any person who shall, without the consent of the registrant –

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

As used in this subsection, (FOOTNOTE 1) the term "any person" includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.

(2) Notwithstanding any other provision of this chapter, the remedies given to the owner of a right infringed under this chapter or to a person bringing an action under section 1125(a) of this title shall be limited as follows:

(A) Where an infringer or violator is engaged solely in the business of printing the mark or violating matter for others and establishes that he or she was an innocent infringer or innocent violator, the owner of the right infringed or person bringing the action under section 1125(a) of this title shall be entitled as against such infringer or violator only to an injunction against future printing.

(B) Where the infringement or violation complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic communication as defined in section 2510(12) of title 18, the remedies of the owner of the right infringed or person bringing the action under section 1125(a) of this title as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers and innocent violators.

(C) Injunctive relief shall not be available to the owner of the right infringed or person bringing the action under section 1125(a) of this title with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter or violating matter where restraining the dissemination of such infringing matter or violating matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication after the regular time for such delivery or transmission, and such delay would be due to the method by which publication and distribution of such periodical or transmission of such electronic communication is customarily conducted in accordance with sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter or violating matter.

(D) As used in this paragraph –
(i) the term "violator" means a person who violates section 1125(a) of this title; and
(ii) the term "violating matter" means matter that is the subject of a violation under section 1125(a) of this title.

AMENDMENTS

1992 – Par. (1). Pub. L. 102-542 inserted at end "As used in this subsection, the term 'any person' includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity."

1988 – Par. (2). Pub. L. 100-667 amended par. (2) generally. Prior to amendment, par. (2) read as follows: "Notwithstanding any other provision of this chapter, the remedies given to the owner of the right infringed shall be limited as follows: (a) Where an infringer in engaged solely in the business of printing the mark for others and establishes that he was an innocent infringer the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing; (b) where the infringement complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical the remedies of the owner of the right infringed as against the publisher or distributor of such newspaper, magazine, or other similar periodical shall be confined to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodical:

Provided, That these limitations shall apply only to innocent infringers; (c) injunction relief shall not be available to the owner of the right infringed in respect of an issue of a newspaper, magazine, or other similar periodical containing infringing matter when restraining the dissemination of such infringing matter in any particular issue of such periodical would delay the delivery of such issue after the regular time therefor, and such delay would be due to the method by which publication and distribution of such periodical is customarily conducted in accordance with sound business practice, and not to any method or device adopted for the evasion of this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter."

1962 – Par. (1). Pub. L. 87-772 amended provisions generally, and among other changes, inserted "distribution", and struck out "purchasers as to the source of origin of such goods or services" after "or to deceive" in subsec. (a), inserted provisions regarding the likelihood of such use causing confusion, mistake, or deception, in subsec. (b), and struck out the limitation on recovery under subsec. (b) to acts committed with knowledge that such acts would deceive purchasers. Par. (2)(b). Pub. L. 87-772 substituted "publisher" for "published".

Sec. 1115. Registration On Principal Register As Evidence Of Exclusive Right To Use Mark; Defenses

(a) Evidentiary value; defenses

Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a mark registered on the principal register provided by this chapter and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration subject to any conditions or limitations stated therein, but shall not preclude another person from proving any legal or equitable defense or defect, including those set forth in subsection (b) of this section, which might have been asserted if such mark had not been registered.

(b) Incontestability; defenses

To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce. Such conclusive evidence shall relate to the exclusive right to use the mark on or in connection with the goods or services specified in the affidavit filed under the provisions of section 1065 of this title, or in the renewal application filed under the provisions of section 1059 of this title if the goods or services specified in the renewal are fewer in number, subject to any conditions or limitations in the registration or in such affidavit or renewal application. Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the following defenses or defects:

(1) That the registration or the incontestable right to use the mark was obtained fraudulently; or

(2) That the mark has been abandoned by the registrant; or

(3) That the registered mark is being used by or with the permission of the registrant or a person in privity with the registrant, so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or

(4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; or

(5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 1057(c) of this title, (B) the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved; or

(6) That the mark whose use is charged as an infringement was registered and used prior to the registration under this chapter or publication under subsection (c) of section 1062 of this title of the registered mark of the registrant, and not abandoned:

Provided, however, That this defense or defect shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant's mark; or

(7) That the mark has been or is being used to violate the antitrust laws of the United States; or

(8) That equitable principles, including laches, estoppel, and acquiescence, are applicable.

The antitrust laws, referred to in subsec. (b)(7), are classified generally to chapter 1 (Sec. 1 et seq.) of this title.

AMENDMENTS

1988 – Subsec. (a). Pub. L. 100-667, Sec. 128(a), inserted "the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the" after "facie evidence of", inserted "or in connection with" after "in commerce on", substituted "another person" for "an opposing party", and inserted ", including those set forth in subsection (b) of this section," after "or defect". Subsec. (b). Pub. L. 100-667, Sec. 128(b)(1), amended introductory provisions generally. Prior to amendment, introductory provisions read as follows: "If the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the affidavit filed under the provisions of said section 1065 subject to any conditions or limitations stated therein except when one of the following defenses or defects is established:". Subsec. (b)(3). Pub. L. 100-667, Sec. 128(b)(2), inserted "on or" after "goods or services". Subsec. (b)(4). Pub. L. 100-667, Sec. 128(b)(3), struck out "trade or service" after "than as a" and "to users" after "only to describe". Subsec. (b)(5). Pub. L. 100-667, Sec. 128(b)(4), substituted "(A) the date of constructive use of the mark established pursuant to section 1057(c) of this title, (B) the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C)" for "registration of the mark under this chapter or". Subsec. (b)(8). Pub. L. 100-667, Sec. 128(b)(5), (6), added par. (8).

1962 – Subsec. (a). Pub. L. 87-772 substituted "registration subject to" for "certificate subject to", and struck out "certificate of" before "registration issued". Subsec. (b). Pub. L. 87-772 substituted "registration shall" for "certificate shall", and "affidavit filed under the provisions of said section 1065" for "certificate" in text preceding par. (1), substituted "registrant or a person in privity with the registrant," for "assignee", and struck out "has been assigned and" after "registered mark" in par. (3), substituted "registration of the mark under this chapter or" for "the", and struck out "(a) or" before "(c) of section 1062" in par. (5), inserted "registration under this chapter", substituted "such registration or such" for "the date of", and struck out "(a) or" before "(c) of section 1062", "only where the said mark has been published pursuant to subsections (c) of section 1062 of this title and shall apply" after "defect shall apply", and "under subsection (a) or (c) of section 1062 of this title" after "registrant's mark", in par. (6).

Sec. 1116. Injunctive Relief

(a) Jurisdiction; service

The several courts vested with jurisdiction of civil actions arising under this chapter shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under section 1125(a) of this title. Any such injunction may include a provision directing the defendant to file with the court and serve on the plaintiff within thirty days after the service on the defendant of such injunction, or such extended period as the court may direct, a report in writing under oath setting forth in detail the manner and form in which the defendant has complied with the injunction. Any such injunction granted upon hearing, after notice to the defendant, by any district court of the United States, may be served on the parties against whom such injunction is granted anywhere in the United States where they may be found, and shall be operative and may be enforced by proceedings to punish for contempt, or otherwise, by the court by which such injunction was granted, or by any other United States district court in whose jurisdiction the defendant may be found.

(b) Transfer of certified copies of court papers The said courts shall have jurisdiction to enforce said injunction, as provided in this chapter, as fully as if the injunction had been granted by the district court in which it is sought to be enforced. The clerk of the court or judge granting the injunction shall, when required to do so by the court before which application to enforce said injunction is made, transfer without delay to said court a certified copy of all papers on file in his office upon which said injunction was granted.

(c) Notice to Commissioner

It shall be the duty of the clerks of such courts within one month after the filing of any action, suit, or proceeding involving a mark registered under the provisions of this chapter to give notice thereof in writing to the Commissioner setting forth in order so far as known the names and addresses of the litigants and the designating number or numbers of the registration or registrations upon which the action, suit, or proceeding has been brought, and in the event any other registration be subsequently included in the action, suit, or proceeding by amendment, answer, or other pleading, the clerk shall give like notice thereof to the Commissioner, and within one month after the judgment is entered or an appeal is taken the clerk of the court shall give notice thereof to the Commissioner, and it shall be the duty of the Commissioner on receipt of such notice forthwith to endorse the same upon the file wrapper of the said registration or registrations and to incorporate the same as a part of the contents of said file wrapper.

(d) Civil actions arising out of use of counterfeit marks (1)(A) In the case of a civil action arising under section 1114(1)(a) of this title or section 380 of title 36 with respect to a violation that consists of using a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services, the court may, upon ex parte application, grant an order under subsection (a) of this section pursuant to this subsection providing for the seizure of goods and counterfeit marks involved in such violation and the means of making such marks, and records documenting the manufacture, sale, or receipt of things involved in such violation.

(B) As used in this subsection the term "counterfeit mark" means –
(i) a counterfeit of a mark that is registered on the principal register in the United States Patent and Trademark Office for such goods or services sold, offered for sale, or distributed and that is in use, whether or not the person against whom relief is sought knew such mark was so registered; or
(ii) a spurious designation that is identical with, or substantially indistinguishable from, a designation as to which the remedies of this chapter are made available by reason of section 380 of title 36; but such term does not include any mark or designation used on or in connection with goods or services of which the manufacture or producer was, at the time of the manufacture or production in question authorized to use the mark or designation for the type of goods or services so manufactured or produced, by the holder of the right to use such mark or designation.

(2) The court shall not receive an application under this subsection unless the applicant has given such notice of the application as is reasonable under the circumstances to the United States attorney for the judicial district in which such order is sought. Such attorney may participate in the proceedings arising under such application if such proceedings may affect evidence of an offense against the United States. The court may deny such application if the court determines that the public interest in a potential prosecution so requires.

(3) The application for an order under this subsection shall –
(A) be based on an affidavit or the verified complaint establishing facts sufficient to support the findings of fact and conclusions of law required for such order; and
(B) contain the additional information required by paragraph

(5) of this subsection to be set forth in such order.

(4) The court shall not grant such an application unless –

(A) the person obtaining an order under this subsection provides the security determined adequate by the court for the payment of such damages as any person may be entitled to recover as a result of a wrongful seizure or wrongful attempted seizure under this subsection; and

(B) the court finds that it clearly appears from specific facts that –
(i) an order other than an ex parte seizure order is not adequate to achieve the purposes of section 1114 of this title;
(ii) the applicant has not publicized the requested seizure;
(iii) the applicant is likely to succeed in showing that the person against whom seizure would be ordered used a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services;
(iv) an immediate and irreparable injury will occur if such seizure is not ordered;
(v) the matter to be seized will be located at the place identified in the application;
(vi) the harm to the applicant of denying the application outweighs the harm to the legitimate interests of the person against whom seizure would be ordered of granting the application; and
(vii) the person against whom seizure would be ordered, or persons acting in concert with such person, would destroy, move, hide, or otherwise make such matter inaccessible to the court, if the applicant were to proceed on notice to such person.

(5) An order under this subsection shall set forth –
(A) the findings of fact and conclusions of law required for the order;
(B) a particular description of the matter to be seized, and a description of each place at which such matter is to be seized;
(C) the time period, which shall end not later than seven days after the date on which such order is issued, during which the seizure is to be made;
(D) the amount of security required to be provided under this subsection; and
(E) a date for the hearing required under paragraph (10) of this subsection.

(6) The court shall take appropriate action to protect the person against whom an order under this subsection is directed from publicity, by or at the behest of the plaintiff, about such order and any seizure under such order.

(7) Any materials seized under this subsection shall be taken into the custody of the court. The court shall enter an appropriate protective order with respect to discovery by the applicant of any records that have been seized. The protective order shall provide for appropriate procedures to assure that confidential information contained in such records is not improperly disclosed to the applicant.

(8) An order under this subsection, together with the supporting documents, shall be sealed until the person against whom the order is directed has an opportunity to contest such order, except that any person against whom such order is issued shall have access to such order and supporting documents after the seizure has been carried out.

(9) The court shall order that a United States marshal or other law enforcement officer is to serve a copy of the order under this subsection and then is to carry out the seizure under such order. The court shall issue orders, when appropriate, to protect the defendant from undue damage from the disclosure of trade secrets or other confidential information during the course of the seizure, including, when appropriate, orders restricting the access of the applicant (or any agent or employee of the applicant) to such secrets or information.

(10)(A) The court shall hold a hearing, unless waived by all the parties, on the date set by the court in the order of seizure. That date shall be not sooner than ten days after the order is issued and not later than fifteen days after the order is issued, unless the applicant for the order shows good cause for another date or unless the party against whom such order is directed consents to another date for such hearing. At such hearing the party obtaining the order shall have the burden to prove that the facts supporting findings of fact and conclusions of law necessary to support such order are still in effect. If that party fails to meet that burden, the seizure order shall be dissolved or modified appropriately.

(B) In connection with a hearing under this paragraph, the court may make such orders modifying the time limits for discovery under the Rules of Civil Procedure as may be necessary to prevent the frustration of the purposes of such hearing.

(11) A person who suffers damage by reason of a wrongful seizure under this subsection has a cause of action against the applicant for the order under which such seizure was made, and shall be entitled to recover such relief as may be appropriate, including damages for lost profits, cost of materials, loss of good will, and punitive damages in instances where the seizure was sought in bad faith, and, unless the court finds extenuating circumstances, to recover a reasonable attorney's fee. The court in its discretion may award prejudgment interest on relief recovered under this paragraph, at an annual interest rate established under section 6621 of title 26, commencing on the date of service of the claimant's pleading setting forth the claim under this paragraph and ending on the date such recovery is granted, or for such shorter time as the court deems appropriate.

Sec. 1117. Recovery For Violation Of Rights; Profits, Damages And Costs; Attorney Fees; Treble Damages

(a) When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, or a violation under section 1125(a) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party.

(b) In assessing damages under subsection (a) of this section, the court shall, unless the court finds extenuating circumstances, enter judgment for three times such profits or damages, whichever is greater, together with a reasonable attorney's fee, in the case of any violation of section 1114(1)(a) of this title or section 380 of title 36 that consists of intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark (as defined in section 1116(d) of this title), in connection with the sale, offering for sale, or distribution of goods or services. In such cases, the court may in its discretion award prejudgment interest on such amount at an annual interest rate established under section 6621 of title 26, commencing on the date of the service of the claimant's pleadings setting forth the claim for such entry and ending on the date such entry is made, or for such shorter time as the court deems appropriate.

Sec. 1121. Jurisdiction Of Federal Courts; State And Local Requirements That Registered Trademarks Be Altered Or Displayed Differently; Prohibition

(a) The district and territorial courts of the United States shall have original jurisdiction and the courts of appeal of the United States (other than the United States Court of Appeals for the Federal Circuit) shall have appellate jurisdiction, of all actions arising under this chapter, without regard to the amount in controversy or to diversity or lack of diversity of the citizenship of the parties.

(b) No State or other jurisdiction of the United States or any political subdivision or any agency thereof may require alteration of a registered mark, or require that additional trademarks, service marks, trade names, or corporate names that may be associated with or incorporated into the registered mark be displayed in the mark in a manner differing from the display of such additional trademarks, service marks, trade names, or corporate names contemplated by the registered mark as exhibited in the certificate of registration issued by the United States Patent and Trademark Office.

Sec. 1127. Construction And Definitions; Intent Of Chapter

In the construction of this chapter, unless the contrary is plainly apparent from the context –

The United States includes and embraces all territory which is under its jurisdiction and control.

The word "commerce" means all commerce which may lawfully be regulated by Congress.

The term "principal register" refers to the register provided for by sections 1051 to 1072 of this title, and the term "supplemental register" refers to the register provided for by sections 1091 to 1096 of this title.

The term "person" and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term "juristic person" includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.

The term "person" also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.

The terms "applicant" and "registrant" embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.

The term "Commissioner" means the Commissioner of Patents and Trademarks.

The term "related company" means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.

The terms "trade name" and "commercial name" mean any name used by a person to identify his or her business or vocation.

The term "trademark" includes any word, name, symbol, or device, or any combination thereof –
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

The term "service mark" means any word, name, symbol, or device, or any combination thereof –
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.

The term "certification mark" means any word, name, symbol, or device, or any combination thereof –
(1) used by a person other than its owner, or
(2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

The term "collective mark" means a trademark or service mark –

(1) used by the members of a cooperative, an association, or other collective group or organization, or
(2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, and includes marks indicating membership in a union, an association, or other organization.

The term "mark" includes any trademark, service mark, collective mark, or certification mark.

The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce –

(1) on goods when –
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

A mark shall be deemed to be "abandoned" when either of the following occurs:
(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of that mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

The term "colorable imitation" includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.

The term "registered mark" means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase "marks registered in the Patent and Trademark Office" means registered marks.

The term "Act of March 3, 1881", "Act of February 20, 1905", or "Act of March 19, 1920", means the respective Act as amended.

A "counterfeit" is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.

Words used in the singular include the plural and vice versa.

The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trade-marks, trade names, and unfair competition entered into between the United States and foreign nations.

AMENDMENT OF SECTION

Pub. L. 103-465, title V, Sec. 521, 523, Dec. 8, 1994, 108 Stat. 4981, 4982, provided that, effective one year after the date on which the WTO Agreement enters into force with respect to the United States (Jan. 1, 1995), this section is amended by amending the par. defining "abandoned" to read as follows:

A mark shall be deemed to be "abandoned" if either of the following occurs:
(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

AMENDMENTS

1992 – Pub. L. 102-542 inserted after fourth undesignated paragraph "The term 'person' also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity."

1988 – Pub. L. 100-667, Sec. 134(1), amended par. defining "related company" generally. Prior to amendment, par. read as follows: "The term 'related company' means any person who legitimately controls or is controlled by the registrant or applicant for registration in respect to the nature and quality of the goods or services in connection with which the mark is used."

Pub. L. 100-667, Sec. 134(2), amended par. defining "trade name" and "commercial name" generally. Prior to amendment, par. read as follows: "The terms 'trade name' and 'commercial name' include individual names and surnames, firm names and trade names used by manufacturers, industrialists, merchants, agriculturists, and others to identify their businesses, vocations, or occupations; the names or titles lawfully adopted and used by persons, firms, associations, corporations, companies, unions, and any manufacturing, industrial, commercial, agricultural, or other organizations engaged in trade or commerce and capable of suing and being sued in a court of law."

Pub. L. 100-667, Sec. 134(3), amended par. defining "trademark" generally. Prior to amendment, par. read as follows: "The term 'trademark' includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify and distinguish his goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown."

Pub. L. 100-667, Sec. 134(4), amended par. defining "service mark" generally. Prior to amendment, par. read as follows: "The term 'service mark' means a mark used in the sale or advertising of services to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor."

Pub. L. 100-667, Sec. 134(5), amended par. defining "certification mark" generally. Prior to amendment, par. read as follows: "The term 'certification mark' means a mark used upon or in connection with the products or services of one or more persons other than the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such goods or services or that the work or labor on the goods or services was performed by members of a union or other organization."

Pub. L. 100-667, Sec. 134(6), amended par. defining "collective mark" generally. Prior to amendment, par. read as follows: "The term 'collective mark' means a trade-mark or service mark used by the members of a cooperative, an association or other collective group or organization and includes marks used to indicate membership in a union, an association or other organization."

Pub. L. 100-667, Sec. 134(7), amended par. defining "mark" generally. Prior to amendment, par. read as follows: "The term 'mark' includes any trade-mark, service mark, collective mark, or certification mark entitled to registration under this chapter whether registered or not."

Pub. L. 100-667, Sec. 134(8), substituted par. defining "use in commerce" for former par. which read as follows: "For the purposes of this chapter a mark shall be deemed to be used in commerce (a) on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto and the goods are sold or transported in commerce and (b) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in this and a foreign country and the person rendering the services is engaged in commerce in connection therewith." and par. providing when a mark is deemed abandoned for former par. which read as follows: "A mark shall be deemed to be 'abandoned' – "(a) When its use has been discontinued with intent not to resume. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie abandonment. "(b) When any course of conduct of the registrant, including acts of omission as well as commission, causes the mark to lose its significance as an indication of origin. Purchaser motivation shall not be a test for determining abandonment under this subparagraph."

1984 – Pub. L. 98-620, Sec. 103(1), in definition of "trademark" substituted "trademark" for "trade-mark", and substituted "identify and distinguish his goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown" for "identify his goods and distinguish them from those manufactured or sold by others".

Pub. L. 98-620, Sec. 103(2), in definition of "service mark" substituted "The term 'service mark' means a mark used in the sale or advertising of services to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown" for "The term 'service mark' means a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others".

Pub. L. 98-620, Sec. 103(3), in subpar. (b) of par. relating to when a mark shall be deemed to be "abandoned", inserted "Purchaser motivation shall not be a test for determining abandonment under this subparagraph."

1975 – Pub. L. 93-596 substituted "Patent and Trademark Office" for "Patent Office" in two places and "Commissioner of Patents and Trademarks" for "Commissioner of Patents" in definition of "Commissioner".

1962 – Pub. L. 87-772 substituted, "predecessors," for "and" in definition of "applicant" and "registrant", "Titles, character names and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor" for "and includes without limitation the marks, names, symbols, titles, designations, slogans, character names, and distinctive features of radio or other advertising used in commerce", in definition of "service mark", inserted "or the services are rendered in more than one State or in this and a foreign country and the person rendering the services is engaged in commerce in connection therewith" in fifteenth paragraph relating to use in commerce, struck out "purchasers" after "deceive" in definition of "colorable imitation", and substituted "commerce" for "commence" in last paragraph relating to the intent of the chapter.

EFFECTIVE DATE OF 1994 AMENDMENT Amendment by Pub. L. 103-465 effective one year after the date on which the WTO Agreement enters into force with respect to the United States (Jan. 1, 1995).

Trademark Office Roles and Responsibilities

Trademark Office Roles and Responsibilities

What is a Trademark Office?

The United States Patent and Trademark Office is a federal agency of the Department of Commerce; the agency is responsible for the issuance of patents to inventors and trademark registration for intellectual property and product identification.
Located in Alexandria, Virginia, the Trademark Office operates under the legal basis expressed in Article 1, Section 8 of the United States Constitution. This section states—among other things—that Congress has the authority to promote the progress of science and useful arts, by safeguarding—for a limited time—to inventors and authors the exclusive Right to their respective discoveries and writings.
Each state in the U.S. offers trademark offices that uphold the laws and processes instituted by the United States Trademark Office. To acquire a trademark at the state level, all applicants must file with the trademark office of the specific state in which protection is sought.
Mission of the Trademark Office:

The mission of the Trademark Office is to promote technological and industrial progress in the United States and to strengthen the economy by instilling regulations relating to the delivery and protection of patents and trademarks. The delivery of patents and trademarks ensures that creative thought and the construction of inventions will be protected, thus promoting the tangible construction of works.
The Trademark Office is also responsible for advising the Secretary of Commerce, as well as the president, concerning the administration of a trademark, patent and copyright. Furthermore, the Trademark Office will offer advice on the trade-related characteristics of intellectual property.
The trademark office will examine applications for trademark registration. If the trademark office approves said applications, the trademark will be registered on either the Supplemental Register or the Principal Register, depending on whether the mark satisfies certain criteria. This function; however, is somewhat unpopular as trademark applicants now seek more expedited services offered by state trademark offices.
Who Qualifies for Patents and Trademarks?
The Patent and Trademark Office only allows qualified professionals to practice before the office. The term “practice” denotes the tangible filing of a patent application on behalf of artists or inventors, the act of prosecuting patent applications and participating in appeals and other proceedings before the Patent and Trademark Office’s board.
The Patent and Trademark office establishes its own standards for individuals who are deemed eligible to practice; the Trademark Office requires that any individual practice seek registration. Individuals who register with the Trademark Office have passed the agency’s registration examination—these individuals are distinct from patent attorneys who are required to pass—in addition to the patent bar– a state bar exam.
Patent agents may only act in a representative capacity only in patent matters presented to the Trademark Office; these individuals may not represent patent holders or applicants in the court of law. To take the patent bar exam, the prospective candidate must possess a degree in physical science or engineering.
Unrepresented inventors may file patent applications on their own behalf. If the applicant is not familiar with the procedures of the Trademark Office, the examiner will suggest the filing party to hire a patent agent or attorney.
 

Trademarks Common Law and Trademarks

Trademarks Common Law and TrademarksIt can only be sold and marketed in the state it originated in or is manufactured. Another company could essentially used the same trademark if was used for another kind of product–for example, a different flavor or different ingredients–the manufacturers were not aware of the existence of the trademark beforehand, and such product is made, distributed, and marketed in another state. 

Common law trademarks, therefore, can make the possibility for infringement cases to occur because their is no physical record or account of a particular trademark to ever exists; hence why it is strongly recommended to federally register trademarks. Before establishing a trademark, an individual or company must make an attempt to research that a proposed trademark is not currently being used and is mandated by United States law. 
The research can be an expensive undertaking, and the time it takes to verify a trademark’s legality could be lengthy. If trademarks were all required to be registered at the federal level, such a search would not be cumbersome for a record would exist proving the availability of a particular trademark.

Difference Between Trademarks and Patents

Difference Between Trademarks and Patents

It is often that patents and trademarks can be confused for they both deal with concept of intellectual property. Furthermore, they also are regarded as industrial property, in the context that both patents and trademarks are used commercially. 
A trademark refers to the use of a name, symbol, signature, image, or devise that used in terms of differentiating a product from others by indicating its origin or manufacturer. A patent refers to an invention that grants a set of particular rights to the creator or inventor of the product or item. 
In other words, a trademark refers to the brand name of a product, while a patent refers to the invention of a product. Though a patent and trademark may often be seen as one in the same, there exists substantial differences.
A trademark, under protection by law, can prevent others from using a similar mark that may confuse consumers and create the potential for the purchase of a product that is not what they are actually paying for. 
For example, Pepsi began to market its product in the same red color that Coca-Cola bottles use. Herein lies another key factor: trademarks do not prevent others to produce and market a similar product; they only thing they may not use is similar mark associated with that type of product already being used. 
Coca-Cola uses its trademarked script logo on a red background, while Pepsi uses a blue background and its trademarked tri-colored circle.
Patents, on the other hand, give the right to its owner to prevent others from making, using, selling, or importing a particular invention. Patents granted in the United States have a term of twenty years from the date that the patent application was filed with the United States Patent and Trademark Office. 
Furthermore, a patent in the United States is only good within the United States, and its territories; U.S. patents do not have validity on an international level.
Patents and trademarks also differ because, while a patent has an expiration date, trademarks are virtually endless, for they can be renewed for as long as the trademark owner plans on using the mark and pays the instated renewal fees. 
Conversely, patents and trademarks differ because a patent does not need the continuous involvement or participation by its owner, where as a trademark is liable to have its registration revoked if it is not used continuously or is “abandoned.” Though there may be circumstances in which a patent and trademark can be applied to a singular invention or product, it is generally recommended that if a particular item should be patented rather than trademarked. 
A patent allows for the commercial viability and success of an invention because, once registered, no competitive markets may produce the same product or invention; a trademark simply denies others the use of the particular mark associated with the product, but it is not restricted to produce the same item, as long as a different trademark is employed. In other words, trademarks can only provide for brand name exclusivity, not product exclusivity.