Trade Marks 2022 Comparisons

In the United States, trade mark rights are governed by both statutory and common law. Trade mark rights are created under common law by using the trade mark on or in connection with goods and/or services. At the federal level, a trade mark can be registered with the US Patent and Trademark Office (USPTO) only if the mark is being used in interstate commerce or is subject to registration under an applicable international agreement.

The USA is a signatory to the Trademark Law Treaty, the Singapore Treaty on the Law of Trademarks, the Madrid Protocol, the 1967 Paris Convention for the Protection of Industrial Property, the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (the "TRIPS Agreement"), and the General Inter-American Convention for Trade Mark and Commercial Protection of Washington, 1929 (the "Pan-American Convention").

The United States recognises many different types of trade marks. In addition to marks on goods, the USA recognises rights in service marks, collective marks, certification marks and trade dress (product packaging or product configuration). Typically, a trade mark consists of one or more letters, a word and/or an image, shape or colour. Although less common, a trade mark may also consist of a distinctive taste, sound, smell or touch.

Trade mark rights are created under common law by use of the mark on goods, on point of sale materials for goods, or in connection with the advertising or rendering of services. In addition to rights under common law, the Lanham Act provides for the federal registration of marks and for certain rights and remedies to trade mark owners not available under the common law. Each state in the USA also has its own statutory scheme for the registration and enforcement of trade marks, but any rights granted under these schemes apply only within the state.

Surnames as Marks

It is possible to obtain trade mark rights in a surname but typically only if the surname has acquired distinctiveness as a mark for the relevant goods and services. Applications filed with the USPTO to register a surname as a mark will likely be refused unless the applicant can demonstrate the mark’s acquired distinctiveness. One could be prohibited from using their own surname as a mark if it is likely to cause confusion with a pre-existing mark.

Similar to trade marks, trade dress consists of product packaging or product shape and design to identify and distinguish the goods of one seller from another. For a service, it may be the decor or environment in which a service is provided, such as the distinctive decor, menu, and style of a restaurant.

Collective Marks

Under the Trademark Act, a collective mark is owned by a collective entity and the mark is used by the members of the collective. The two types of collective marks are:

• collective trade marks or collective service marks; and
• collective membership marks.

A collective trade mark or collective service mark is a mark adopted by a "collective" (ie, an association, union, co-operative, fraternal organisation, or other organised collective group) for use only by its members. The members use the mark to identify their goods or services and distinguish them from those of non-members. The "collective" itself neither sells goods nor performs services, but the collective may advertise or otherwise promote its members using the mark.

A collective membership mark is a mark adopted for the purpose of indicating membership in an organised collective group, such as a union, an association, or other organisation. Neither the collective nor its members uses the collective membership mark to identify and distinguish goods or services. The sole function of a collective membership mark is to indicate that the person displaying the mark is a member of the organised collective group.

Certification Marks

A certification mark is a mark owned by one person and used by others in connection with their goods or services to certify quality, or regional or other origin. The certifying organisation that owns the certification mark controls who can use the mark and will let others use its certification mark only if the goods, services, or their providers meet the organisation’s standards.

Standard Character versus Special Form Marks

In addition to the different types of marks, the USPTO distinguishes between two types of formats when registering a mark: "standard character" marks and "special form" marks. Standard character marks are marks without a design in which the applicant is applying to protect the wording of the mark regardless of how it may appear on a product or service — ie, without claim to any particular font style, size, or colour. Special form marks include a two or three-dimensional design, colour and/or words, letters, or numbers, or the combination thereof in a particular font style or size.

The use of Olympic symbols, emblems, trade marks and names is specially protected by 36 U.S.C. Section 380, which prohibits the unauthorised use of the Olympic symbol (interlocking rings), emblem, the words "Olympic", "Olympiad", "Citius Altius Fortius", or any combination or simulation thereof tending to cause confusion, to cause mistake, to deceive, or to falsely suggest a connection with the Olympic Committee or any Olympic activity, or any other trade mark, trade name, sign, symbol, or insignia falsely representing association with, or authorisation by, the International Olympic Committee or associated US corporation.

The owner of a well-known foreign mark may bring an action under Section 43(a) of the Lanham Act against an unauthorised user of the mark in commerce in the USA, even if the foreign mark owner has not itself registered or used the mark in the USA. It may also oppose an application to register the mark or seek cancellation of a registration of the mark before the USPTO’s Trademark Trial and Appeal Board (TTAB) on grounds that the mark is likely to cause confusion with the well-known foreign mark or that the unauthorised use of the mark falsely suggests a connection to persons, institutions, beliefs, or national symbols. If the foreign mark is determined to be famous in the USA, then the foreign mark owner could also assert a claim in court or before the TTAB for trade mark dilution under Section 43(c) of the Lanham Act.

Rights existing under common law will continue for as long as the trade mark remains in use and has not been abandoned.

See 3.3 Term of Registration.

The first sale of an item bearing a trade mark typically exhausts the trade mark owner’s rights with respect to that specific item. This allows that item to be resold by the buyer without permission of the trade mark owner. However, third parties may not lawfully misrepresent themselves as an "authorised" dealer in the course of reselling the product. Exceptions to this rule exist in the context of grey market goods and where the product is sold through authorised dealers subject to certain conditions such that a resale of the product that is not subject to those conditions would effectively render the product a materially different product. 

In the USA, the ® symbol is used to indicate that a mark is federally registered. This symbol should only be used once the federal registration has issued; otherwise, the mark owner should use a TM to designate that the mark is being claimed as a mark. The owner of an unregistered but claimed mark can use TM either if it has a pending application that has not yet been examined or approved or if it claims common law use rights in the mark but has not filed an application. However, use of a TM provides no information about whether the mark is or is not registered, merely that a claim of rights is being made in the mark.

A trade mark assignment is a transfer of an owner’s rights, title, and interest in a trade mark or service mark. The transferring party ("assignor") transfers to the receiving party ("assignee") its property rights in the mark. The assignment must be in writing duly executed by the assignor and assign the mark along with the goodwill of the business associated with that mark.

If a US trade mark is assigned without the associated goodwill, the transfer is determined to be an "assignment in gross" and can result in an assignee’s losing rights to the assigned trade mark. Therefore, a trade mark that is not yet in use in the United States, and that is the subject of an intent-to-use–based US trade mark application, must be transferred together with the part of the ongoing and existing business connected with the mark.

Assignment Process

Assignment of an application or registration does not need to be recorded in the USPTO to be effective. However, if it is not recorded, the assignment may not be effective against a subsequently dated but recorded assignment. An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the USPTO within three months after the date of the assignment or prior to the subsequent purchase. A written assignment, duly acknowledged and recorded, is prima facie evidence, which enables the assignee to invoke the registration against third parties.

An assignment differs from a licence, which is the grant of permission to use a mark in some manner but does not transfer any rights of ownership in the mark.

A mark is assigned by written assignment identifying:

• the parties;
• the mark(s) being assigned;
• the USPTO application(s) and/or registration(s) for such mark(s), if applicable; and
• the effective date of the assignment.

The assignment should include a statement that the assignee is acquiring all right, title and interest in the mark(s) and the underlying goodwill of the business associated with the mark(s). The assignment must be signed by the assignor, or someone designated with the authority to bind the assignor.

While an application or registration itself cannot be licensed, the right to use a mark may be licensed.

Any type of licence can be granted by a mark owner (ie, exclusive, non-exclusive, for some or all of the goods or services listed in the registration, for specific geographical areas), provided that the mark owner exercises control over the licensee’s use of the licensed mark. The licence should not be a "naked license", ie, licensed without quality controls ensuring that the mark is being used precisely as the mark owner designates it. A licence need not be recorded, but doing so can provide notice to third parties of the rights of the licensee.

While US law recognises that property owners should be able to licence their property for any term or duration, most trade mark licences are not perpetual. One obstacle to granting a perpetual licence is the requirement to exercise quality control over the licensee.

The rejection of a trade mark licence by a licensor in bankruptcy does not terminate the licence, and the licensee may continue to use the mark under the terms of the agreement.

An assignment is not required to be recorded in the USPTO, although there are consequences for not recording an assignment of an application or registration in the USPTO Assignments Division. If it is not recorded, the assignment may not be effective against a subsequently dated and recorded assignment.

An assignment is void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the USPTO within three months after the date of the assignment or prior to the subsequent purchase. A written assignment, duly acknowledged and recorded, is prima facie evidence of the assignment, which enables the assignee to invoke the registration against third parties.

In addition to the requirements discussed, all licences and assignments under US law must contain valid consideration. Otherwise, the contract will be deemed unenforceable.

A trade mark that is the subject of a pending application can be assigned or licensed, but one cannot assign or licence the application separate and apart from the mark. If the mark is not yet in use in interstate commerce and is the subject of an intent to use application, it can be licensed, and the third party’s use of the mark will inure to the licensor and can be used to demonstrate use for purposes of registration. The rights in an intent to use application may be assigned but only to a successor of the ongoing and existing business of the applicant, or portion of the applicant’s business, to which the mark pertains. However, an assignment of an intent to use application as security is not permitted and voids not only the assignment but also the application.

A security interest is a property interest created by agreement between parties or by operation of law over assets in order to secure the performance of an obligation. Because a trade mark is a form of property and an asset of the business that owns the trade mark, it can be used as a security interest, subject to rights in rem, assigned by way of security, and be levied in execution. All of these transactions should be recorded in the Assignments Division of the USPTO. However, an assignment of an intent to use application for purposes of security is not permitted and voids both the assignment and the application.

In the USA, trade mark rights arise from actual use of the mark. A registration is not necessary to acquire rights in a mark, but a federal registration conveys significant benefits, including the legal presumption of validity and ownership of the mark, and the presumption of the owner’s exclusive right to use the mark on or in connection with the goods/services listed in the registration throughout the USA and its territories. 

Registering Different Types of Marks

Generally, the same standards apply for registering different types of marks. A mark that is inherently distinctive (fanciful, arbitrary or suggestive) is entitled to registration without proof that the mark has obtained a secondary meaning in the eyes of consumers as signifying the unique source of a product or service. In contrast, a mark that merely describes a feature, attribute or purpose of the goods or service can be registered only upon a showing that such secondary meaning has been obtained.

In many cases, it will be sufficient for the trade mark owner to claim secondary meaning for its mark by submitting a declaration that the mark has been in continuous and substantially exclusive use for at least five years. In some cases, the United States Patent and Trademark Office (USPTO) may require additional evidence, such as proof of revenues and advertising expenditures under the mark, evidence of unsolicited media coverage, consumer testimony of the mark’s source designating significance, or other evidence.

Trade Dress

If trade dress satisfies the federal standards of trade mark or service mark protection as identifying and distinguishing a product or service, then it is registerable. The elements of the trade dress, however, must be listed and defined so that the public understands the exact parameters of the claimed exclusive right. Product configuration trade dress can never be inherently distinctive and always requires proof of secondary meaning before it is entitled to registration.

Each state and the United States Patent and Trademark Office (USPTO) has its own "register", which is typically available to the public. The USPTO maintains two different types of registers: a Principal Register and a Supplemental Register. The Supplemental Register offers registration for marks that cannot meet all the requirements for registration on the Principal Register — namely, the mark is not inherently distinctive and does not yet have "secondary meaning" (ie, when consumers associate the mark with a single source for the goods or services in question) but is capable of acquiring distinctiveness through use.

Marks registered on the Supplemental Register lack most of the advantages of a registration on the Principal Register. For example, there is no presumption of validity, ownership and exclusive right to use a mark on the Supplemental Register. However, a Supplemental Registration can be cited by the USPTO against subsequent applications as a basis to refuse registration to marks that are likely to cause confusion.

Before a trade mark owner uses and/or applies to register a mark, it is recommended to conduct a search for possible conflicts with previously used but unregistered marks, applied-for marks, and registered marks. This can be done by conducting a search of existing databases and the World Wide Web. The public may conduct searches free of charge using the Trademark Electronic Search System (TESS) on the USPTO website. TESS provides access to text and images of registered marks and marks in pending and abandoned applications. In addition, there are private, commercial databases that offer computerised trade mark searching services for a fee.

Federal trade mark registrations are granted for ten-year periods running from the date the registration is granted, provided that a declaration of continued use is filed between the fifth and sixth anniversary of the registration date. The registration can be renewed every tenth anniversary from the registration date, if the registered mark continues to be used in commerce. The renewal application can be filed as early as one year before the expiration date of the registration and, with payment of an additional fee, as late as six months after the expiration date. If the registration is not renewed within this window, it will expire and it cannot be revived.

Registrations of a trade mark under state law are subject to the provisions of the relevant state statute, which governs the term.

If the owner of a registered mark in the USA wishes to update, refresh, or modernise the mark and reflect the refreshed version on its registration certificate in the USPTO’s records, the owner must file a request to amend the registration certificate under Section 7(e) of the Lanham Act. As long as the refresh does not constitute a material alteration of the original mark, the amendment will be permitted. Mere changes in background or styling, or modernisation, are not ordinarily considered to be material changes in the mark.

However, each case must be decided on its own facts. The controlling question is always whether the old and new forms of the mark create essentially the same commercial impression. If the USPTO determines that the new version of the mark is a material alteration of the original, then it would be necessary to file a new application to register the new version of the mark.

When applying for a federal registration, the standards are generally the same for all marks – namely, that the mark is available (ie, not registered by a third party for the same or similar goods/services), that the mark is distinctive, that the mark is or will be used in US Commerce, and that the mark does not fall into one of the exceptions to federal registration listed in Section 2 of the Lanham Act. 

The Trademark Manual of Examining Procedure (TMEP), which is available on the USPTO website, lists all of the requirements to obtain a federal trade mark registration. Generally, an application for trade mark or service mark registration must include the following:

• a clear drawing of the mark;
• a verified statement signed by a person properly authorised to sign on behalf of the applicant stating, among other things, that the application is accurate and true and that to the best of the signatory's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods of the other person, to cause confusion, or to cause mistake, or to deceive;
• a written application that includes the following:
1. the date on which the application was signed;
2. information about the applicant, its entity type (ie, individual, partnership, joint venture, corporation, association, etc) and domicile;
3. an identification of the goods/services;
4. the basis for registration in the USA; a statement that the applicant is using the mark in commerce in a Section 1(a) application, or has a bona fide intent to use the mark in commerce in an application under Section 1(b) or Section 44;
5. a description of the mark, if the mark is not in standard characters; and
6. certain other informational statements about the mark for certain types of marks and circumstances;
• a filing fee for each class of goods/services (multi-class applications are allowed); and
• a specimen or sample of actual use of the mark evidencing the mark’s use in US Commerce in a Section 1(a) application, or a true copy of the applicant’s home country certificate of registration if based upon a foreign registration of a non-US applicant in a Section 44(e) application. Section 818 of the TMEP provides an application checklist.

Applicants

An application to register a mark must be filed by the owner of the mark or, in the case of an intent-to-use application, by the person who is entitled to use the mark in commerce. Normally the owner of a mark is the person who applies the mark to goods that they produce or use the mark in the sale or advertising of services that they perform.

Applicants may be natural persons or juristic persons. Juristic persons include corporations, partnerships, joint ventures, unions, associations, and other organisations capable of suing and being sued in a court of law. Nations, states, municipalities, and other related types of bodies operating with governmental authorisation may apply to register marks that they own.

Except where an applicant files an application seeking registration of a mark based upon the applicant’s foreign trade mark registration, or an extension of protection of an International Registration under the Madrid system, an applicant must demonstrate use of the mark in commerce before a registration will issue. The Lanham Act defines "use in commerce" to mean 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 goods, a mark is used in commerce 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, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce that may be lawfully regulated by the US Congress (ie, interstate commerce).  For services, a mark is used in commerce when it is used or displayed in the sale or advertising of services and the services are rendered in interstate 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.

For an application filed based upon the applicant’s intent to use the mark in commerce, the applicant has six months from the date of the USPTO’s Notice of Allowance to file the required statement of use. If use has not begun within the six-month period, the applicant may request a further extension of six months. A total of five extension requests may be filed.

It is not possible to apply to register two or more variations of a trade mark in a single application. Each application can contain only one specifically defined mark to register. In some cases, a trade mark owner may use its mark with a word or other element that may vary depending on the context in which that mark is being used. Generally, if an application seeks registration of a mark with a significant changeable or "phantom" element, the examining attorney must consider whether the element encompasses so many potential combinations that the drawing would not give adequate constructive notice to third parties as to the nature of the mark and a thorough and effective search for conflicting marks is not possible. If so, the examining attorney must refuse registration on the ground that the application seeks registration of more than one mark.

When an application to register a trade mark is examined by the USPTO, the examining attorney will conduct a search of the USPTO records to determine whether any prior registrations or pending applications are so similar as to create a likelihood of confusion. If the applied for mark is likely to cause confusion with a prior registered mark, the prior registration will be cited as a bar to registration of the new mark. If there exists a confusingly similar mark in a prior pending application, the new application will be suspended pending the prosecution of the prior application. If the prior application proceeds to registration, then the resulting registration will usually be cited against the new application as a bar to registration.

The applicant has the opportunity to argue against the likelihood of confusion refusal, which can include the submission of a consent from the owner of the prior registered mark to the registration of the applied for mark. Naked consents carry little to no weight and will generally be disregarded. A valid consent will include a recitation of the facts and/or reasons why the parties believe there is no likelihood of confusion between their marks.

Before an application is approved for publication, a third party has an opportunity to present evidence bearing on the registrability of a mark by filing a "letter of protest" with the Office of the Deputy Commissioner for Trademark Examination Policy. The Deputy Commissioner will accept a letter of protest filed before publication where it is determined that the evidence is relevant and supports any reasonable ground for refusal appropriate in ex parte examination. Upon acceptance of a letter of protest, the Deputy Commissioner will forward the relevant evidence (but not the letter of protest itself) to the examining attorney.

Once an application has been published for opposition, any person who believes that they would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Board, and paying the required fee, within thirty days after the date of publication, or within an extension period granted by the Board for filing an opposition. At the pleading stage, all that is required is that a plaintiff allege facts sufficient to show a "real interest" in the proceeding, and a "reasonable basis" for its belief that it would suffer some kind of damage if the mark is registered. Once standing to oppose is shown, the opposer may base its challenge on any statutory basis in the Lanham Act which negates the applicant's right to registration of the mark.

The applicant and the USPTO both have the ability to amend an application during prosecution to a limited extent.

The applicant may narrow or limit the goods/services in an application or alter the mark provided that the alteration is not material (ie, the mark’s meaning is not changed and a new search is not required). The applicant listed in the application can only be changed if there is a clerical error causing the wrong applicant to be listed or the application is assigned and the assignment is recorded with the Assignments Recordation Branch. The examining attorney may issue an examiner’s amendment whenever appropriate to expedite prosecution of an application. An examiner’s amendment is a communication to the applicant in which the examining attorney states that the application has been amended in a specified way.

Authorisation by the applicant to enter an examiner’s amendment is usually given in a telephone conversation, e-mail communication, or interview between the examining attorney and the applicant or the applicant’s qualified practitioner. Examiner’s amendments generally are not used when there are statutory refusals. However, if there is a potential statutory refusal, and an amendment will obviate the refusal, the examining attorney may attempt to resolve the issues through an examiner’s amendment.

The USPTO can revoke or change its examination decisions, adding a refusal or requirement, at any time before the publication of the application. After the application is published, the USPTO may add a refusal or requirement only if it would be "clear error" not to do so.

An applicant may divide its application during prosecution by filing a request to divide and paying the appropriate fee. Dividing the application results in the creation of a second child application which is given a new serial number but typically retains the same priority filing date as the original application. Dividing the application is a common approach when the mark is in use for some but not all the goods and/or services listed in the application.

An applicant can divide the application to separate those goods and services for which the mark is not yet in use from those that are in use. Doing so allows the applicant to move forward more promptly and obtain registrations covering those goods and services for which use has already begun.

Depending upon the nature of the incorrect information, it may be possible to amend the application to provide the correct information. The examining attorney, subject to review by the Direction of the USPTO, will determine if the correction is permissible. Generally, only clerical type information can be corrected. If, for example, the wrong owner of the mark is identified as the applicant, that cannot be corrected and a new application would have to be filed.

An application to register a trade mark that meets the application requirements in 4.1 Application Requirements must be approved unless it falls within one of the statutory bases for refusing registration. Section 2 of the Lanham Act prohibits registration if:

• the mark consists of or comprises matter which may falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols;
• the mark consists of or comprises a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant;
• the mark consists of deceptive matter;
• the mark consists of or comprises the flag, coat of arms or other insignia of the USA, a State or municipality or a foreign nation;
• the mark consists of or comprises a name, portrait, or signature identifying a particular living person without their written consent, or the name, signature or portrait of a deceased President during the life of their widow, without their written consent;
• the mark is likely to cause confusion with a mark already registered in the Trademark Office or a mark or trade name previously used in the USA by another and not abandoned;
• the mark is merely descriptive or deceptively misdescriptive of the goods/services, is primarily geographically descriptive or deceptively misdescriptive of the goods/services, or is primarily merely a surname, and the applicant cannot prove the existence of secondary meaning; or
• the mark comprises matter that is functional.

During examination, if the USPTO examiner concludes that fraudulent specimens of use or other false information have been submitted, an office action may issue requiring the applicant to provide additional information or specimens of use. If the applicant fails to file a timely and satisfactory response, registration may be refused. In addition, if the applicant or its counsel are found to have engaged in an improper filing scheme, the USPTO could enter a sanctions order, including termination of the application.

In addition, the USPTO may refuse to register a claimed mark if it concludes that the claimed mark fails to function as a trade mark for the applicant’s goods or services. For example, if the claimed mark is widely used to convey ordinary or familiar concepts or sentiments, or social, political, religious, or similar informational messages that are in common use.

The Supreme Court has held that a mark may not be refused registration on grounds that it is immoral or scandalous, or that it disparages another person or group.

In the process of registering a mark with the USPTO, the application is examined by an examining attorney to see if any of the statutory bars to registration apply to the applicant's mark. For example, in an office action, the examiner may reject the application in whole or in part, request further information or request a disclaimer of part of the mark. The applicant then has the opportunity to respond.

Upon review of a response, the examining attorney may state that the refusal(s) to register, or the requirement(s), is final. After a final rejection that maintains a substantive refusal to register, the applicant may respond by timely filing:

• a request for reconsideration that seeks to overcome any substantive refusals to register and/or complies with any outstanding requirements; and/or
• a notice of appeal to the Trademark Trial and Appeal Board (TTAB).

Only a final refusal can be appealed, and the applicant must file the appeal within six months of the issuance date of the final refusal.

A TTAB decision can be appealed to the Court of Appeals for the Federal Circuit or a federal District Court.

The USA is a party to the Madrid Protocol. International Registration applications can be filed based on a US application or registration. While International Registrations designating the USA are renewed through the World Intellectual Property Organisation, the owner must also file an Affidavit of Continued Use or Excusable Non-use in the USPTO to prevent the extension of protection from being cancelled. This Affidavit must first be filed between the fifth and sixth anniversary of the dates of registration in the United States and thereafter within the year prior to every ten-year period after the date of registration in the United States. The Affidavit may be filed late, within a six-month grace period, upon payment of an additional fee.

An opposition must be filed with the Trademark Trial and Appeal Board (TTAB) within 30 days after the date of publication of the trade mark, or within an extension period granted by the TTAB for filing an opposition. The deadline to oppose may be extended by the TTAB for 30 days upon request or up to 90 days upon a showing of good cause. After receiving one or two extensions of time totalling 90 days, a person may file one final request for an extension of time for an additional 60 days but only with the consent of the application or upon a showing of extraordinary circumstances.

The time for filing an opposition cannot be extended beyond 180 days from the date of publication.

The notice of opposition must include a concise statement of the reasons for the opposer’s belief that the opposer would be damaged by the registration of the opposed mark and must state the grounds for opposition. The reasons could include any of the reasons for which the USPTO might refuse registration, see 4.9 Refusal of Registration. The owner of a famous mark can oppose registration on the grounds that the applied for mark is likely to dilute, by blurring or by tarnishment, the distinctiveness of the famous mark.

Any person who believes it is or will be damaged by registration of a mark has standing to file an opposition. At the pleading stage, all that is required is that a opposer allege facts sufficient to show a "real interest" in the proceeding, and a "reasonable basis" for its belief that it would suffer some kind of damage if the mark is registered. Examples may include a competitor or an applicant that is denied registration because of the existence of the opposed application. It is not necessary for the opposer to own a trade mark registration.

Oppositions follow the Federal Rules of Civil Procedure and discovery is similar to that in federal court. However, because oppositions are administrative proceedings, the TTAB can only decide the registration of a mark, not its use or any monetary damages. In opposition proceedings, there are initial disclosure requirements, a mandatory discovery conference and a period of discovery that typically includes interrogatories, requests for admissions and requests for production of documents, all of which are limited to 75 each. Depositions may be taken and motions may be made in opposition proceedings as well.

Testimony Period

After the discovery period has been completed and the parties have completed their pre-trial disclosures, each party has a testimony period with which to present their evidence to the TTAB. Specifically, the opposer will have a 30-day period to present its case in chief, after this, the applicant will have 30 days to present its case and the opposer will finally have 15 days to present any rebuttal evidence. Thereafter:

• the opposer submits its brief on the merits of the case;
• the applicant submits its responsive brief on the merits; and
• the opposer may submit a reply brief.

Oral Hearings

An oral hearing is optional and is scheduled only if a timely request is filed by a party to the proceeding. In most cases, an oral hearing is not requested by either party. The oral hearing provides a party with one last opportunity to emphasise its strongest arguments, and to refute its adversary’s arguments. It is particularly useful in cases with complex issues or a complex record, or where the defendant needs to respond to arguments in the plaintiff’s reply brief. If neither party requests an oral hearing, the case will be decided on the evidence made of record during the testimony periods.

Attendance at a scheduled oral hearing is voluntary, not mandatory. If any party appears at the scheduled time, the party will be heard, whether the party that appears is the one that requested the hearing. A party that does not intend to appear at a scheduled hearing should notify the TTAB at least two weeks prior to the date of the scheduled hearing.

A party may appeal an adverse decision of the TTAB within 60 days of the decision. The appeal must be filed with either the US Court of Appeals for the Federal Circuit or a district court.

One benefit of filing in district court is the opportunity to present new evidence. Both the new evidence and the TTAB record are reviewed with de novo scrutiny. In addition, the appealing party can present new issues which were not brought before the TTAB and the case can be expanded to include a prayer for injunctive relief for trade mark infringement. The adverse party may also counterclaim for its own federal or common law claims.

The only type of TTAB decision that may be appealed, whether to the US Court of Appeals for the Federal Circuit or by way of civil action, is a final decision (ie, a "final dispositive ruling that ends litigation on the merits" before the TTAB). Interlocutory decisions or orders (ie, decisions or orders that do not put an end to the litigation before the TTAB) are not appealable. In an inter partes proceeding, a party may obtain review of an order or decision of the TTAB which concerns matters of procedure (rather than the central issue or issues before the TTAB), and does not put an end to the litigation before the TTAB, by timely petition to the Director.

During the first five years following the federal registration of a mark, that registration may be cancelled on any basis for which it can be shown that the registration should not have issued or should not be maintained.

Once the registration has reached its fifth-year anniversary, the grounds for cancellation are limited as described in 6.2 Legal Grounds for Filing a Revocation/Cancellation Proceeding. 

Depending upon the time at which a cancellation proceeding is filed, registration may be cancelled on any basis for which it can be shown that the registration should not have issued or should not be maintained. These grounds may include, among others, that the mark is merely descriptive and has not acquired distinctiveness of a mark, that the mark was not in use in commerce by the relevant date prior to registration, that the registered mark has never been used in commerce, that the registered mark is likely to be confused with the petitioner’s prior registered or common law mark, and that the registered mark is likely to dilute a prior famous mark. 

After a mark has been registered for at least five years, the grounds for cancellation are limited to the following:

• that the mark has become generic for all or a portion of the covered goods or services;
• that the mark is functional;
• that the mark has been abandoned;
• that the registered mark has never been used in commerce (if registration is less than ten years old);
• that the registration was obtained fraudulently;
• that a registration for a collective or certification mark was obtained in contravention of the statute;
• that the mark comprises deceptive matter; 
• that the mark falsely suggests a connection with persons, institutions, beliefs, or national symbols, or brings them into contempt, or disrepute;
• in the case of mark for wines or spirits, that it consists of a geographic indication other than the origin of the goods;
• that the mark consists of the flag, coat of arm or insignia of the United States, or of any State or municipality, or of any foreign nation or otherwise;
• that the mark consists of or comprises a name, portrait, or signature identifying a particular living individual without their written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, without her written consent;
• if the registered mark is being used by, or with the permission of, the registrant to misrepresent the source of the goods or services on or in connection with which the mark is used; or
• in the case of a certification mark on the ground that the registrant does not:
1. control, or is not able legitimately to exercise control over, the use of such mark;
2. engage in the production or marketing of any goods or services to which the certification mark is applied;
3. permit the use of the certification mark for purposes other than to certify; or
4. discriminately refuse to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies.

Cancellation of a federal registration does not necessarily invalidate the underlying mark or affect any common law trade mark rights that the owner may otherwise have. Depending upon the reason for cancellation, the trade mark owner may still have protectable rights under common law.

Any person who believes they are or will be damaged by the continued registration of a mark is entitled to bring a cancellation proceeding against an existing trade mark registration, 15 USC Section 1064. This has been interpreted by the courts to be a low standard allowing anyone who is not a “mere interloper” to institute such proceedings. A petitioner seeking to cancel another’s registration is not required to plead or prove economic damages as a result of continued registration of the challenged mark.

A petition to cancel a federal trade mark registration is typically filed with the TTAB. The civil courts do not have independent jurisdiction to actions filed specifically to cancel a federal registration. However, a person who is a party to a civil lawsuit that involves a federally registered mark in connection with an asserted claim (ie, infringement) may request cancellation of that registration as a remedy.

A registration can be cancelled in part if the grounds for cancellation apply only to a portion of the goods or services described in the registration. For example, if the trade mark owner is found to have abandoned the mark as to some but not all of the registered goods, the registration may be cancelled as to the abandoned goods but will remain in full force and effect as to the non-abandoned goods.

In the course of cancellation proceedings, the USPTO is authorised to modify or amend a registration to limit the goods and services identified in the registration or to restrict the scope of a registration in cases where concurrent use is established. In some cases, the petitioner may be seeking what is in effect a partial cancellation by requesting a limitation of the goods and services on grounds that a likelihood of confusion with the petitioner’s mark will be avoided if the limitation is ordered. In such cases, the petitioner must prove that the limitation properly applies to the registrant’s goods and services as used and that such limitation will obviate confusion between the petitioner’s and registrant’s respective goods. 

Similarly, it is not uncommon for the parties to agree to an amendment as part of a settlement of their dispute. This resolution frequently occurs where the parties have agreed to co-exist and/or where the registrant has consented to registration of the petitioner’s mark where the registered mark had been cited as a bar to registration of the petitioner’s mark.

Infringement claims are never addressed by the TTAB because its jurisdiction is limited to deciding the registrability of a mark. In most cases, if a cancellation action is pending before the TTAB, and an infringement case involving the same mark is pending in a court, the TTAB will stay the cancellation action pending resolution of the court case. This is because TTAB decisions are not binding on the courts, but court decisions are binding upon the TTAB.

A court having proper and independent jurisdiction over the action and the parties in a trade mark infringement case is empowered to "determine the right to registration, order the cancellation of registrations, in whole or in part, restore cancelled registrations, and otherwise rectify the register with respect to the registrations of any party to the action", 15 USC Section 1119. This statute does not allow a party to initiate a lawsuit solely for the purpose of cancelling another’s registration. There must be some other independent basis for jurisdiction before the court. Typically, a cancellation claim under this statute would be pleaded as a counterclaim to the plaintiff’s claim for infringement of the mark.

Registrations obtained by fraud are subject to cancellation actions as described in 6.2 Legal Grounds for Filing a Revocation/Cancellation Proceeding. In addition, registrations obtained under Section 1 of the Lanham Act based upon a false or fraudulent claim of use in commerce are subject to a petition for reexamination. This petition can be made by anyone to the USPTO Director if the petitioner can demonstrate the registered mark was not in use on all or a part of the goods and services identified in the registration by the relevant date for showing use prior to registration. For applications filed on the basis of use in commerce, the relevant date is the application date. For applications filed on an intent to use basis, the relevant date is the later of the date an amendment to allege use was filed or the date the deadline to file a statement of use expired.

In addition, the USPTO is training examiners to identify indicia of fraud during prosecution, such as the submission of fraudulent specimens. If an examiner believes indicia of fraud exist, an office action seeking further information or specimens may issue. The examiner has the authority to refuse registration if the application fails to provide satisfactory information in response to the office action.

The USPTO has announced a Trademark Administrative Sanctions Process under which it will investigate persons who submit improper filings as part of an improper filing scheme. If an application becomes subject to an investigation, it will be suspended pending the results of the investigation. If the USPTO finds evidence of an improper filing scheme, which may include fraud, affected applications will be terminated. Affected registrations will not be cancelled but an entry explaining the adverse action will be made in the public record of the registration.

The federal Lanham Act contains no statute of limitations for filing infringement claims, but such claims are subject to the equitable defence of laches (undue delay). When an accused infringer asserts laches as a defence, the court looks to the statute of limitations of the corresponding claim under the state law in which the court sits and applies a rebuttable presumption against the trade mark owner if the lawsuit is filed after that date. As a result, whether laches is determined to apply, may vary depending upon where the action has been filed.

If a trade mark is infringed, the trade mark owner may initiate a lawsuit against the infringer by filing a complaint. The complaint may assert different causes of action under federal and/or state law, depending on the nature of the infringement and whether the mark is registered.

For example, a cause of action for federal trade mark infringement can be asserted only if the mark has been registered with the USPTO, but a federal claim for false designation of origin, false endorsement, or false association can be based on an unregistered mark if the defendant is using the infringing mark in commerce. Similarly claims under state law, such as common law trade mark infringement, unfair competition, and deceptive or unfair trade practices do not require that the trade mark be registered.

The owner of a famous trade mark that is distinctive may assert a claim of trade mark dilution.

If a trade mark is being used in a domain name, the trade mark owner may bring an action for cybersquatting.

The parties to an action for trade mark infringement are usually the trade mark owner and those parties accused of infringement. In the case of a defendant corporation or other business entity, the owners, managers, officers, and/or directors of the entity may be named and held personally liable if they have actively participated in or directed the infringing activity. 

In some cases, an exclusive licensee of the trade mark may initiate a claim for infringement and/or false designation of origin. With respect to a federally registered mark, if the exclusive licence effectively grants rights akin to ownership of the mark (ie, the trade mark owner retains no right to use the mark and has expressly authorised the exclusive licensee to sue for infringement), the exclusive licensee can pursue a federal trade mark infringement action. Even if the mark is not registered or the licence does not convey rights akin to ownership, courts have allowed exclusive licensees to bring actions for false designation of origin under Section 43(a) of the Lanham Act. In contrast, non-exclusive licensees do not have standing to pursue such infringement claims.

Class actions are permitted in the USA but would be unusual in trade mark cases. Because the definition of a trade mark pertains to the designation of a single source, the circumstances for a plaintiff’s class action suit would not seem to exist. Multiple plaintiffs could join together in an action against a defendant or group of defendants that are infringing the plaintiffs’ respective marks, without necessarily constituting a class action.

Conceivably, circumstances could arise where a trade mark owner might file suit against a defendant class, but such circumstances would be rare. They must meet the same requirements for a plaintiff’s class action case. To establish a defendant class, the trade mark owner would have to show that:

• the class is so numerous that joinder of all members is impracticable;
• common questions of law or fact applicable to the entire class;
• the defences of the representative parties are typical of the entire class; and
• the representative defendants will fairly and adequately protect the interests of the class.

As a general rule, the trade mark owner must have a colourable claim against each defendant class member.

Except for establishing that there is a real controversy for a court to adjudicate and that the court in which the suit is filed has jurisdiction to entertain the case, there are no prerequisites to filing an infringement suit. Often, however, a trade mark owner will send at least one demand letter to try to resolve the dispute without litigation. A letter puts the infringer on actual notice of the claim and can provide a basis for establishing intentional infringement if the infringer does not cease the infringement. A finding of intentional infringement can lead to the award of enhanced damages.

It is important for the owner of a federal registration to have given notice of that registration. This is typically done by using the ® symbol on public uses of the mark. A registered trade mark owner who fails to give any notice that its mark is registered will not be able to recover damages or the infringer’s profits unless the infringer has actual notice of the registration. 

A federal trade mark registration is required to obtain certain remedies that may not be available to a trade mark owner relying only upon its common law trade mark rights. For example, statutory damages are available only in cases involving a counterfeit of a registered mark.

A complaint must contain a short, plain statement showing the basis for the court’s jurisdiction; a short, plain statement of the claims that, if proven, demonstrate the right to the relief being requested; and a demand for the relief requested. A plaintiff may plead claims, or request certain relief, in the alternative. For example, based on the same set of facts, a plaintiff may request punitive damages on a state law unfair competition claim even though punitive damages are not available under a federal statutory trade mark infringement theory. Although a detailed recitation of the facts is not necessary, it is not enough for a plaintiff merely to recite the general elements of a claim.

In federal court, an initial complaint can be amended or supplemented once as a matter of course within 21 days after serving it, or 21 days after an answer or motion to dismiss, motion to strike, or motion for a more definite statement has been filed by the defendant. Thereafter, it can be amended only with the defendant’s consent or the approval of the court. These rules may be modified by the applicable local rules of the district court in which the case is filed. State courts have similar but not necessarily identical rules for amending pleadings.

A defendant may file a counterclaim against the plaintiff, assuming legitimate grounds for such a claim exist. This may include a request that the plaintiff’s trade mark registration be cancelled. If a defendant has a claim against the plaintiff that would be considered a compulsory counterclaim, but the defendant fails to assert it, the defendant will likely be barred from asserting the claim later in a separate lawsuit.

The federal and state courts in the United States have concurrent jurisdiction over cases involving federally registered trade marks. Those decisions may be appealed to the appropriate federal and state courts of appeals depending on the geographic location of the trial court.

Federal appellate court decisions may be appealed to the US Supreme Court, while state appellate court decisions would be appealed to the relevant state’s highest court. The federal district courts must follow the law as it has been interpreted by its applicable regional circuit court of appeals. Because these interpretations can vary among the circuits on certain issues, it is important for any plaintiff to consider these issues before it decides where to file suit.

Individual parties may represent themselves in federal court and are not required to be represented by a lawyer.  In contrast, corporations must be represented by a lawyer, although that lawyer may be an employee of the corporation.

The decision of the TTAB can and should have preclusive effect in subsequent court litigation between the parties when the issues adjudicated by the TTAB are materially the same as those before the court. Issues decided by the TTAB that have been afforded preclusive effect in later litigation include a party’s standing to challenge a trade mark registration, rights of priority, and fraud on the USPTO. That said, a decision by the TTAB that a mark is or is not likely to cause confusion may or may not be given preclusive effect by a court.

In many cases, because the TTAB’s consideration is limited to what appears on the face of applicable trade mark applications and registrations, the TTAB may not have considered or addressed marketplace factors that would bear on the issue of infringement in a court action. Thus, it is arguable whether a decision on likelihood of confusion would have any preclusive effect. Nevertheless, even if a court determines it is not bound by the prior decision of the TTAB, the court may find the decision persuasive.

A court is not bound by decisions of examining attorneys in the USPTO to approve or deny registration of a mark. Indeed, the USPTO takes the position in examining marks that it is not bound by prior decisions of examining attorneys as to approval or denial of registration.

An alleged infringer can initiate a declaratory judgment action so long as there is a real dispute for adjudication. Whether the dispute is real depends upon the circumstances of the case.

Demand and Notice Letters

The receipt of a demand letter may or may not be enough to establish declaratory judgment jurisdiction in court. For example, a letter demanding that the alleged infringer “cease and desist” all use by a certain date and indicating that a lawsuit will be filed if the alleged infringer does not comply would almost certainly permit the filing a declaratory judgment action in response. However, a letter putting the alleged infringer on notice of the trade mark owner’s federal registration and the potential for conflict if the parties’ respective areas of trade ever converge may not be enough.

Likelihood of Confusion

A trade mark owner cannot file suit unless there is a present likelihood of confusion; if the parties’ respective market areas do not overlap and customers are unlikely to encounter both marks, there is likely no real dispute yet to be resolved. Similarly, it has been held by some courts that the filing of an opposition or cancellation action before the TTAB is not enough because the TTAB only decides registration disputes and not questions of infringement. The alleged infringer must be able to demonstrate a real threat of a trade mark infringement action being filed against it.

Protections Available to a Potential Defendant

If the potential defendant can establish that it has been damaged as a result of a registration procured by fraud, then it may assert a claim for damages against the registered trade mark’s owner under 15 USC Section 1120. The damage must arise from the actual registration of the mark as opposed, for example, to damages arising from the mark owner’s use of the mark or mere assertion of an infringement claim.

If a trade mark owner files or maintains a frivolous claim for trade mark infringement, or engages in abusive litigation tactics, it may be subject to an award of sanctions by the court. Sanctions could include an award of attorney’s fees or other monetary relief to the defendant and/or even dismissal of the plaintiff’s claims. 

A counterfeit mark is more than just a mark that is likely to cause confusion with another mark. In the USA, a counterfeit mark is defined as a "spurious mark which is identical with, or substantially indistinguishable from, a registered trademark".

In a civil case where trade mark counterfeiting is found, the plaintiff can elect to recover statutory damages of between USD1,000 and USD200,000 per counterfeit mark per type of goods or services, in lieu of actual damages. The statutory damages can be increased to a maximum of USD2 million, or a plaintiff’s actual damages can be increased by up to three times, if the counterfeiting is found to be wilful or intentional. An award of attorney fees is mandatory in a case where intentional trade mark counterfeiting is proven, unless there are extenuating circumstances.

In addition to civil liability by the counterfeiter, trade mark counterfeiting can also be a criminal offense, subjecting the counterfeiter to fines and/or imprisonment, see 8.9 Trade Mark Infringement as an Administrative or Criminal Offence.

Trade mark litigation in the USA follows the rules of civil procedure applicable to all civil cases pending before the court. The Federal Rules of Civil Procedure apply in all federal district courts, whereas state rules of civil procedure apply in state courts. Federal courts have local rules that also apply, and, in any given case, a judge may have his or her own specific procedures that the parties must follow.

To prove infringement, it is not necessary for the plaintiff to prove that the defendant has used the infringing material as a trade mark. The only question is whether the defendant’s use is likely to cause confusion with the plaintiff’s trade mark. However, in the case of descriptive words and phrases, the defendant may be able to prove, as an affirmative defence, that it is not using the relevant word or phrase as a mark, but only in a descriptive, fair use to describe its goods or services.

The context of that use will be a critical factor in determining whether that use is a fair, descriptive use. For example, fair use is more likely to be found where the defendant has used the word or phrase as part of a sentence describing its product without highlighting or emphasising the descriptive terms apart from the surrounding text. In any case, if the defendant is successful in proving fair use, it will prevail even though there may be some potential confusion. 

To establish trade mark infringement, the trade mark owner must show that it owns a valid trade mark, that its trade mark rights were established prior to the defendant’s alleged infringement, and that the defendant’s use of its mark is likely to cause confusion. In evaluating the likelihood of confusion, courts consider various factors, including, without limitation, the similarity of the marks, the commercial strength and inherent distinctiveness of the plaintiff’s mark, the similarity of the goods and services for which the competing marks are used, the trade channels through which the parties’ respective goods and services are sold, the relevant class of potential buyers of the goods and services, the sophistication of those purchasers, and the existence of any evidence of actual confusion. This list is not exhaustive, and no particular factors are dispositive in every case.

In addition to trade mark infringement, the following claims may be available under the Lanham Act.

False Designation of Origin

If a defendant uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.

False Advertising

If a defendant uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities.

Dilution by Blurring

If plaintiff owns a famous mark that is inherently distinctive or has acquired distinctiveness and the defendant, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that creates an association with and impairs the distinctiveness of the famous mark.

Dilution by Tarnishment

If plaintiff owns a famous mark that is inherently distinctive or has acquired distinctiveness and the defendant, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that creates an association with and harms the reputation of the famous mark.

Cybersquatting

If a defendant with a bad faith intent to profit from the mark registers, traffics in, or uses a domain name that is identical or confusingly similar to a mark that is distinctive at the time the domain name is registered, or that is identical, confusingly similar, or dilutive of a mark that is famous at the time the domain name is registered.

A federal trade mark registration constitutes prima facie evidence in court of the validity of the registered mark and of the registration of the mark, of the owner's ownership of the mark, and of the owner's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate.

If the registration has become incontestable by the registrant’s filing of a declaration of incontestability following five years of continuous use of the registered mark, then the registration constitutes conclusive evidence in court of the facts stated above.

Whether or not the registration has become incontestable, after a mark has been registered for five years, the grounds on which it can be cancelled are significantly limited, see 6.2 Legal Grounds for Filing a Revocation/Cancellation Proceeding.

A claim for trade mark infringement is subject to a variety of potential defenses. In the USA, affirmative defences refer to those defences upon which the burden is on the defendant to prove. Depending on the circumstances of the case, such affirmative defences may include prior use of the mark, that the plaintiff’s mark has become generic, a fair descriptive use of the allegedly infringing term or phrase, parody, abandonment, licence, laches, acquiescence, waiver, estoppel, First Amendment/free speech, unclean hands, and fraud on the USPTO.

The issue of the nominative fair use of the plaintiff’s mark, in which the defendant has used the plaintiff’s mark to refer to the plaintiff or the plaintiff’s goods and services, is not treated consistently. Some courts, namely those within the Third Circuit, treat nominative fair use as an affirmative defence, while others, such as in the Ninth Circuit, apply a different test to the evaluation of likely confusion.

Discovery is an important (and often expensive) part of trade mark litigation in the USA. In federal court, and some state courts, the parties must voluntarily disclose certain evidence at the beginning of the case. The required disclosures can vary: at a minimum, a party must typically disclose documents and potential witnesses with relevant information it may use as part of its case. Some courts require even more substantial disclosures, including evidence that may hurt a party’s case.

Once initial disclosures are completed, the parties may take depositions of potential witnesses and serve document requests, written questions, requests for the admission of certain facts. The number of requests a party may serve is governed by both the rules of procedure applicable to the particular court, and may even be limited by the judge hearing the case, so this number can vary.

If a party intends to call an expert witness, such as a survey expert, linguist, or damages expert, it will have to disclose the identity of that expert and his or her opinions during the discovery period. The expert must typically prepare and provide a written report and may be deposed.

Experts are commonly used in trade mark cases in the USA on issues of damages, likelihood of confusion, acquired distinctiveness of the plaintiff’s mark, and genericness. Under the rules of evidence, for expert testimony to be admitted and considered, the party submitting that testimony must show that the expert is qualified by knowledge, skill, experience, education, and/or training to offer an opinion on the matter. If qualified as an expert, the expert’s testimony will be admitted if:

• the judge determines that it will help the judge or jury understand the evidence or determine a fact in issue;
• the testimony is based upon sufficient facts and the product of reliable principles and methods; and
• the expert has reasonably applied the principles and methods to the facts in issue. 

Trade mark surveys, if done correctly, can be powerful evidence for either party. While not legally required, if a party with sufficient resources to conduct a likelihood of confusion survey fails to present a survey in evidence, some courts will hold this against the party. This is another example of the importance of understanding the applicable case law in the particular jurisdiction in which the case is to be filed.

Trade mark infringement is typically a civil matter enforced by the trade mark owner in a civil action filed against the infringer. However, trade mark counterfeiting can also be a criminal offense charged by the government. In order to establish the criminal offense of counterfeiting, the government must prove:

• that the defendant trafficked or attempted to traffic in goods or services;
• that such trafficking, or attempt to traffic, was intentional;
• that the defendant used a "counterfeit mark" on or in connection with such goods or services; and
• that the defendant knew that the mark used was counterfeit.

Pre-filing costs vary significantly depending upon the nature and amount of diligence that is undertaken to investigate the infringement, as well as whether any steps are taken to try to engage the infringer in negotiations before filing any lawsuit. A plaintiff must have a good faith basis for filing a complaint in court, so some degree of diligence will be required in order to determine the nature of the infringement and the identity of the infringer if possible. Subject to ethical considerations, an investigator may be hired to collect evidence of the infringement and/or to make a purchase of the infringing goods. Investigative costs could run from several hundred to several thousand dollars.

In some cases, the trade mark owner may elect to commission a consumer survey (likelihood of confusion, secondary meaning or generic nature) prior to filing a lawsuit. A relatively small pilot survey may cost in the USD20-50,000 range whereas a full-blown survey may cost upwards of USD50,000 to over USD150,000 depending on the nature and scope of the survey.

Once litigation is filed, from start to finish, exclusive of appeals, trade mark litigation involves the preparation and filing of the complaint, discovery, pre-trial motion practice, pre-trial preparation, trial, and post-trial motion practice. The total cost varies substantially based upon the importance and value of the trade mark at issue in the case, the total monetary amount in dispute, the complexity of the issues involved, and the geographic location in which the lawsuit is filed. Where there is no settlement, obtaining a final resolution of the dispute can take several years.

According to one study published in the Journal of Marketing, more than 3,000 trade mark infringement cases are filed in US federal district courts each year. See Ertekin, Sorescu, and Houston, Hands off my Brand! The Financial Consequences of Protecting Brands through Trademark Infringement Lawsuits, Journal of Marketing, Vol 82, Issue 5 (2018). Although the vast majority of cases are settled prior to trial, those fewer cases that do proceed to trial typically cost between USD375,000 and USD2 million.

Temporary restraining orders, as well as preliminary and permanent injunctions barring the defendant from any future infringing uses of the trade mark are available in infringement cases as equitable remedies subject to the court’s discretion.

Before a court may grant a preliminary injunction, it must consider and balance the following factors:

• the plaintiff’s likelihood of success on the merits;
• whether the plaintiff is likely to suffer irreparable harm in the absence of a preliminary injunction;
• the balance of equities between the plaintiff and defendant; and
• the public interest.

If the plaintiff demonstrates a likelihood of success on the merits of the infringement claim, it is entitled to a rebuttable presumption that irreparable harm is likely in the absence of the injunction. A defendant may seek to rebut the presumption of irreparable harm by demonstrating that the plaintiff unreasonably delayed in seeking relief or with evidence showing why monetary damages would be a sufficient remedy. The defendant may also be able to establish that the balance of equities should be resolved in its favour because the harm that will be done by the injunction is greater than any harm that may occur if the injunction is denied.

Before a court may grant a permanent injunction, the prevailing plaintiff must show:

• that it has suffered an irreparable injury;
• that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
• that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and
• that the permanent injunction serves public interest.

The prevailing plaintiff is entitled to a rebuttable presumption of irreparable injury without a permanent injunction.

In an infringement case, a prevailing trade mark owner is potentially entitled to recover actual damages, an accounting of the infringer’s profits, statutory damages, and enhanced damages.

Actual damages include the defendant’s profits attributable to the infringement, any lost sales or other direct harm to the plaintiff, and the costs of the lawsuit. When seeking the defendant’s profits, the plaintiff is not required to prove wilful infringement, though any such evidence would be relevant and make it more likely that the court awards the defendant’s profits as a remedy. In calculating the defendant’s profits, once the plaintiff offers evidence of the value of the defendant’s sales, the burden is placed on the defendant to prove any proportion of his total profits which may not have been due to use of the infringing mark.

The Lanham Act also provides for the election of statutory damages as an alternative to actual damages in a counterfeiting case, see 7.10 Counterfeiting.

Following a judgment finding infringement, false designation of origin, or in the case of dilution, a finding that the defendant wilfully intended to trade on the recognition of the mark or to wilfully harm the reputation of the mark, the court may order the defendant to deliver up for destruction all infringing or diluting labels, signs, prints, packages, wrappers, receptacles, and advertisements, and all plates, molds, matrices, and other means of making the same. 

Prior to a trial on the merits, in cases involving counterfeiting, the court may, upon ex parte application, order 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.

Subject to principles of equity, a prevailing trade mark owner is entitled to recover its costs of the action, 15 USC Section 1117(a). Costs, however, do not include a party’s attorney’s fees but are limited to specific costs outlined by statute, such as the court filing fees, transcript costs and witness fees, 28 USC Section 1920.

In "exceptional cases", the court may award reasonable attorney’s fees to the prevailing party, 15 USC Section 1117(a). In deciding whether any particular case is "exceptional", and if so, how much to award, the judge has discretion. Historically, attorney’s fees awards were granted only in cases of counterfeiting, wilful infringement, and/or bad faith in the conduct of the lawsuit. More recently, courts have begun to follow the standard announced by the US Supreme Court for patent cases in Octane Fitness, LLC v ICON Health & Fitness, Inc. They consider the totality of the circumstances to determine if the case is "one that stands out from others with respect to the substantive strength of a party’s litigation position (considering both the governing law and facts of the case) or the unreasonable manner in which the case was litigated". 

An award of attorney fees is mandatory in a case where intentional trade mark counterfeiting is proven unless there are extenuating circumstances. 

Sometimes it may be necessary to seek ex parte relief in the form of a temporary injunction, seizure order, and/or expedited discovery. This is rare and would typically involve counterfeiting cases where providing notice to the defendant would likely result in the disappearance or destruction of critical evidence or even the disappearance of the defendant itself. A plaintiff would need to make a strong showing for such relief.

Courts have the power to award attorney's fees in Lanham Act cases to prevailing defendants if the case is determined to be “exceptional”. A case is not an exceptional case and attorney fees will not be awarded if the plaintiff had a seemingly meritorious claim of trade mark infringement which was not brought in bad faith, but the plaintiff nevertheless lost on summary judgment or at trial. Generally, if the plaintiff pursues a claim it should have known was without merit, attorney fees may be awarded to the prevailing defendant. Unreasonable conduct during litigation can also be a basis for an award of attorney fees to a prevailing defendant.

The owners of a federal trade mark registration on the Principal Register may record the registration with the US Customs and Border Patrol, which maintains a database of all recorded IP rights to assist in its efforts to prevent the importation of goods that infringe registered marks. Recordation is obtained via an electronic application available on the Customs and Border Patrol website. The trade mark owner must submit the registration number and digital image of the mark to be recorded.

The remedies are generally the same for all types of trade marks.

A trade mark case can be settled at any time if the parties choose to do so. Settlement is always within the discretion of the parties, but most judges actively encourage the parties to at least try to settle their case. Under the Federal Rules of Civil Procedure, early on in the life of the case, before any discovery can be conducted, the parties’ representatives must meet and confer about a variety of topics, one of which is the possibility of settlement.

At the initial case management conference before the judge, many judges will make a point to ask whether there have been any settlement discussions and to encourage the parties to discuss settlement sooner rather than later. Some courts will set a specific date in the pretrial scheduling order by which the parties must have met and discussed settlement. 

Formal settlement conferences can be scheduled with magistrate judges or appointed pro tem judges, depending upon the court at the request of the parties. These can be held at any time during the litigation process. And, of course, the parties can voluntarily agree to participate in a private mediation in an attempt to settle their dispute.

Although most trade mark disputes in the USA are still handled by the federal courts, alternative dispute resolution procedures, such as arbitration and mediation, are becoming more common. Many courts now require the parties in civil cases to engage in formal settlement discussions and encourage the use of settlement judges or private mediators to assist the parties. Some maintain a panel of practitioners who can be utilised by the parties for mediation. The American Intellectual Property Law Association and the International Trademark Association qualify and publish their own panels of arbitrators and mediators. 

In some cases, there can be a race to the courthouse with the plaintiff filing an infringement case in one forum and the defendant filing a declaratory judgment action in another forum. This may happen because the parties would prefer to litigate in their “home” forum or because they perceive that the interpretation of an important issue in the case will be more favourable to their position in one forum versus another. In these instances, courts tend to follow the “first to file rule” unless it determines that the earlier filed action was an improper, anticipatory lawsuit. Under the first to file rule, the second court may dismiss or stay its case pending the resolution of the earlier filed suit, or it may elect to transfer the case to the other court if that court would have jurisdiction over the claims and parties.

In theory, under the doctrine of primary jurisdiction, a court might stay its case in favour of a parallel action involving the validity or registrability of a mark before the TTAB where there is need to resolve an issue that has been placed by Congress within the jurisdiction of an administrative body. In most cases, however, the opposite holds true, and the TTAB will stay its action pending resolution of a court case that involves any issue that would be dispositive in the TTAB action.

Trade mark cases may be appealed to the federal appellate circuit court for the jurisdiction of the trial court. A preliminary injunction ruling may be appealed immediately. Any other issue before the court generally may not be appealed until there is a final ruling. Appeals in the federal courts are governed by the Federal Rules of Appellate Procedure, and the applicable rules of the relevant Circuit Court of Appeals. With some exceptions, an appeal generally must be filed within 30 days of the entry of the final judgment.

The time period for resolving an appeal depends on the complexity of the issues and the appellate court’s docket. It is not unusual for the appeals process to take one to two years before an appellate decision is rendered.

There are no special appellate rules specific to trade mark cases.

Both legal and factual issues may be raised on appeal in a trade mark case. Factual findings are reviewed under the "clear error" standard. Legal conclusions are reviewed de novo, without any deference to the trial court’s legal rulings.

Certain trade marks can also be subject to protection under other forms of intellectual property, such as copyright, rights of publicity, design patent and trade dress protection. Copyright can be used to protect logos if they incorporate a sufficient degree of creative expression. Likewise, copyright may protect works such as jingles, collegiate fight songs and commercial advertising that also serve as trade marks to designate a single source of a product or services.

Design patents intersect with trade mark law in the area of product designs. In some cases, an ornamental product design may qualify for both design patent and trade dress protection. Where an ornamental design protected by a design patent has been advertised and marketed in such a way that it also designates a single source of the product, that design may qualify for both design patent and trade dress protection. 

Design patent applications have a much higher rate of allowance than utility patents and it is usually difficult to challenge the validity of a design patent in court. No federal registration is required for trade dress enforcement, but the owner of a registration would be entitled to a presumption of validity that shifts the burden to an infringer to show evidence sufficient to rebut the presumption of validity.

Rights of publicity are governed by state law and protect an individual’s name, likeness, and persona from unauthorised commercial use. To the extent a person’s name or image serves as a trade mark for a product or service, it may be protected under both trade mark and rights of publicity law. To establish a violation of the right of publicity, no finding of likely confusion is required. 

Under state law, claims for common law unfair competition and statutory claims for unfair or deceptive trade practices often overlap with claims for trade mark infringement. Often these claims will be asserted, where possible, in addition to infringement claims under the Lanham Act. However, each state’s law varies so the applicability of a particular state law claim will depend upon the specific facts and circumstances of the case.

The interplay between the protection and registration of trade marks and the free speech clause of the First Amendment of the US Constitution has become a recurring issue in recent years. The US Supreme Court has struck down two related provisions of the Lanham Act prohibiting the registration of disparaging and immoral or scandalous marks on grounds that they violate the First Amendment.

Cases involving the free speech rights in expressive works and products also appear to be increasing. For example, the Ninth Circuit Court of Appeals recently held that a dog squeak toy sold under the name Bad Spaniels and designed to look like a Jack Daniel’s whiskey bottle was protected under the First Amendment against trade mark infringement and dilution claims.

In addition, the Trademark Modernization Act of 2020 created two new statutory procedures for cancelling federal registrations for trade marks that have not been used in commerce. These new procedures are referred to as expungement and re-examination. The USPTO enacted rules to implement these procedures in  December 2021.

Expungement Procedure

The expungement procedure applies to registered marks that have never been used in commerce on or in connection with some or all the goods/services listed in the registration. A petition for expungement may be filed no earlier than three years after the registration date and no later than ten years after the registration date. For each good or service for which it is determined that a mark has never been used in commerce, and for which the registrant is unable to show excusable nonuse, the USPTO Direction shall cancel the registration.

Re-examination Procedure

The re-examination procedure applies to marks registered under Section 1 of the Lanham Act that were not in use in commerce on the relevant date use was required. If the registration is based upon an application claiming use in commerce, the relevant date is the date the application was filed with the USPTO. If the registration is based on an application claiming an intent to use the mark in commerce, the relevant date is the later of the date upon which the applicant filed an amendment to allege use of the mark in commerce or the date upon which the applicant’s period for filing a statement of use of the mark expired.

Any person is entitled to initiate these procedures at any time up to five years after the registration date. For each good or service for which it is determined that the registration should not have issued, the USPTO Director shall cancel the registration.

Other than actions for cybersquatting, there are currently no special rules or situations concerning trade marks and the internet in the USA. The USPTO, as of early 2021, recently published questions for public response concerning the issues of contributory and vicarious liability for trade mark infringement in e-commerce in connection with its study relating to the effectiveness and sufficiency of these doctrines and whether to pursue changes in the application of secondary infringement standards to e-commerce platforms.

In addition, the Shop Safe Act has been introduced in Congress and passed by the House of Representatives. If passed by the Senate and signed into law, this bill would make an electronic commerce platform liable for infringement of a registered trade mark by a third-party seller of goods that implicate health and safety unless the platform has taken certain actions. The prospects for ultimate passage of this bill remain unclear.

There are no other special rules or norms in the USA regarding trade marks as used in business.