United States Trademark Law - Obtaining A Trademark

Obtaining A Trademark

A person or business entity acquires rights in a trademark either by using it in the normal course of business (for example on a tag or label for merchandise being sold to the public) or by filing an application for registration of the mark in the USPTO. An application for registration may be based upon actual use in commerce or upon a bona fide intent to use (ITU). An ITU application will not become a registration until documents evidencing actual use of the mark in interstate commerce, which generally must be shown within a limited time period. Infringing use can only be stopped with actual registration, not an ITU. The value of ITU is in establishing priority—who acquired the right to use the mark first—and so infringers are on borrowed time pending that registration. Trademarks which are not used in interstate commerce can usually be registered on the state level, usually by filing an application with the Secretary of State in the state in which one is doing business.

An individual may represent himself before the USPTO in attempting to register a trademark. However, there are many pitfalls that can trap someone who is not experienced in trademark prosecution matters. An experienced attorney who specializes in trademark registrations typically will charge $800.00 to $1500.00 for preparing and filing an application for trademark registration. If the application is initially rejected because the mark is deemed descriptive or generic, then there will be additional fees for attempting to overcome such rejections.

Recent developments in U.S. trademark law have included the adoption of the Federal Trademark Dilution Act of 1995 (see Trademark dilution), the 1999 Anti-Cybersquatting Consumer Protection Act, and the Trademark Dilution Revision Act of 2006 (see Trademark dilution).

Consistent with the limited nature of trademark protection and the free speech guarantees of the First Amendment, U.S. law provides for a fair use defense to trademark infringement comparable to that under copyright law. The two main categories of protected usage are nominative—using the trademark to actually refer to the trademarked product or trademark owner; and usage of the mark in its common sense, such as a descriptive word or common and unoriginal symbol. For example, Pepsi advertisements may use Coca Cola's trademark when making comparisons to Pepsi products. These uses are still subject to the requirement that there be no consumer confusion as to source or sponsorship. Trademarks may also be lawfully used in parodies, since in that case there is usually no likelihood of confusion.