Trademark Use and Marking Requirements in the United States: What Applicants Need to Know

Understanding Trademark Use Requirements and Marking Practices in the United States

Trademark registration in the United States is governed by the Lanham Act, and the process is influenced by international conventions, such as the Paris Convention. The requirements related to the use of trademarks, marking practices, and priority claims are crucial for businesses and applicants intending to secure and maintain trademark protection. This article delves into the nuances of trademark use claims, marking responsibilities, and the significance of foreign registrations within the U.S. legal framework.

Claiming Use Before Registration

• In the United States, applicants must typically demonstrate actual use of a trademark in commerce before the United States Patent and Trademark Office (USPTO) grants registration. This requirement reflects the foundational principle that trademark rights are acquired through use. However, there are exceptions, particularly under the "intent-to-use" provision, allowing applicants to apply for registration even if the trademark has not yet been used, provided they submit evidence of actual use before the registration is finalized.

Proof of Use and Deadlines

• For a trademark application based on actual use, applicants must supply specimens showing the trademark's use in commerce. In contrast, intent-to-use applications provide the flexibility to submit a statement of use and appropriate specimens after the USPTO issues a Notice of Allowance. Applicants typically have 6 months from the Notice of Allowance to begin using the mark in commerce and must do so within specified time frames, subject to possible extensions, to avoid abandonment of the application.

Priority Rights Under the Paris Convention

• The United States, as a member of the Paris Convention, acknowledges the priority claims of foreign registrations. Section 44 of the Lanham Act permits U.S. registration based on an existing application or registration in a foreign convention member country. While this does not inherently expedite or guarantee registration, it can establish an earlier priority date, which may be beneficial during opposition or enforcement proceedings.

Use Obligations and Defending Against Non-Use Challenges

• Once a trademark is registered, the trademark owner must continue to use the mark in commerce or risk losing the registration. In the U.S., a mark not used for three consecutive years is presumed abandoned. Trademark holders must submit a Section 8 declaration of continued use between the fifth and sixth years after registration to maintain it. Failure to provide this proof can render the registration vulnerable to cancellation.

Marking Practices and Legal Implications

• Trademark owners are not legally mandated to mark their goods or services with symbols like ™ or ®, but doing so is highly advisable. The ™ and SM symbols can be used freely to denote unregistered rights, whereas the ® symbol should be reserved strictly for federally registered trademarks. Marking serves as a public notice of the owner's trademark rights and can influence the recoverable damages in infringement litigation. A lack of appropriate marking might limit available remedies, making proper marking a crucial aspect of enforcement strategy.

Conclusion

The need to demonstrate trademark use, the strategic advantages of asserting priority claims under international agreements, and the implications of marking dictate critical aspects of trademark strategy in the United States. For businesses and trademark professionals, understanding these elements ensures robust protection and effective management of trademark rights. Proper planning around use requirements, timely filing of necessary documentation, and consistent marking practices significantly bolster the enforceability and commercial value of trademarks.