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Use of Trademarks in the U.S.

As North America brings its intellectual property laws in line with the United States-Mexico-Canada Agreement (USMCA), the way trademarks are handled in Mexico and Canada has recently changed. While Mexico now requires a business to use its mark to obtain a Mexican trademark registration, Canada no longer requires the use of a mark in order to obtain a Canadian trademark registration.

A business may spend significant resources attempting to use a trademark in the U.S., but ultimately fail to satisfy legal and technical requirements. Not only are such attempts wasteful, but they may also pose an obstacle to pursuing an otherwise legitimate trademark registration. To successfully register a trademark in the U.S., a business is required to use the trademark on or in connection with its products and/or services, but the law has different requirements for each.

U.S. TRADEMARKS FOR PRODUCTS

For a trademark associated with products, advertising alone, such as use in a brochure or on a website, is not normally enough. The mark must be placed in any manner on the products or on the containers of the products, or on tags or labels affixed to the products. If the nature of the products makes such placement impracticable, then it may be acceptable for the mark to be used on displays associated with the sales of the products. Additionally, the products must be sold or transported in interstate commerce.

The simplest way to satisfy this requirement is to put the trademark directly on the products, such as by incorporating the mark into the mold of molded products, stamping or printing the mark onto the products, or applying a tag or label to the products carrying the mark. The mark could also be applied to the packaging or container of the products.

For an example of displays associated with the sales of a product, the mark can appear with the product in a catalog or on a website, but there are specific requirements for those uses. If used in a catalog, the mark must be accompanied by a description or picture of the product, and the same catalog page generally must include ordering information such as a phone number or a web address. If used on a website, the mark must still be accompanied by a description or picture of the product, and the webpage must include the direct ability to order the product, such as a “Buy Now” or “Add to Cart” button on the webpage.

U.S. TRADEMARKS FOR SERVICES

For a trademark associated with services, the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in interstate commerce. That is, the services must be rendered in more than one state, or in some other way in interstate commerce, or in the U.S. and a foreign country, and the company rendering the services is engaged in commerce in connection with the services.

ENSURING CORRECT U.S. TRADEMARK USE: THE ABCD TEST

To ensure that your trademarks, aside from being placed on the products or used in connection with the sale of services, are being used correctly, use this ABCD test:

  1. Adjective: Use the trademark in the position of an adjective describing the product, followed by the common descriptive noun for the product. For example, use “KLEENEX tissue” not simply “a KLEENEX,” or “XEROX photocopier” rather than simply “the XEROX.”
  2. Brand identification: Properly identify the status of the trademark as a brand with the appropriate trademark symbol e.g., ® for a registered mark and ™ for a mark not yet registered.
  3. Consistency: Be strictly consistent in displaying the mark. If the trademark is punctuated, capitalized or colored in a certain way, it is critical to maintain the same formatting. Any change of any of those properties could be considered a change to the mark, that is, adopting a different mark. Such consistency will also help ensure that others recognize that this is a trademark and not just another word. While it makes sense for a company to adopt a different mark from time-to-time, such changes should only be done intentionally, after careful thought and transition planning, rather than by accident or in a casual attempt at creativity.
  4. Distinctive: Use the mark in a way that is distinctive, that sets it off from surrounding text, such as in a different typeface, color or capitalization
Article by;

Nicholas A. Kees
Alexander C. Lemke
Godfrey & Kahn S.C.

IP Introduces Fast Track Trademark Registration and Renewal

On 23 February 2021, the Department of Intellectual Property issued a Notification introducing a fast track examination process for trademark registration and renewal. This notification is issued with the aim of expediting trademark registrations and the renewal process, thus enhancing and facilitating trademark protection for both the private sector and general public; enabling them to build a conductive business operation.

For the fast track trademark registration, an application for trademark registration will be examined within six months from the filing date, although the publication period and grant of the registration certificate may not be completed in said six-month period. The trademark application eligible for the fast track process must comply with the following conditions:

  • The lists of goods/services must not exceed 30 items.
  • The specifications of goods/services must all conform to the recommended acceptable specifications of the Department of Intellectual Property.

For the fast track trademark renewal, each application will be examined within 45 minutes from the time of submission. The renewal application eligible for fast track renewal must meet the following conditions:

  • The lists of goods/services under the trademark registration must not exceed 30 items.
  • There must be no amendments to the specifications of goods/services under the trademark registration.
  • The renewal application must be submitted at the Department of Intellectual Property, Ministry of Commerce, by the trademark owner or appointed agent. In the latter case, the power of attorney must state that the appointed agent has the authority to receive a certificate of registration.
  • The applicant or appointed agent must request at the time of submission that he/she would like the Trademark Registrar to urgently examine the renewal application and issue the certificate of trademark registration renewal.
  • The official renewal fees must be fully paid. In the event that the renewal application is defective but possible to be corrected within the date of submission of the renewal application, the Registrar shall order the amendment and accordingly grant permission for trademark registration renewal on the date of submission of the renewal application. However, if the application cannot be resolved by the date of submission of the renewal application, the Registrar shall examine the renewal application within the period specified in the public manual (normal process), according to the Licensing Facilitation Act B.E. 2558 (2015).

Please note that this Notification applies to all types of marks, i.e. trademark, service mark, certification mark, and collective mark.