Trademark Registration

Why Conduct a Trademark Clearance Search?

Before investing in a name, logo, or other brand element, it is important to assess whether another party has rights in a mark that could conflict with it. A clearance search looks beyond identical marks. Similarities in appearance, sound, meaning, and the goods or services involved can also raise concerns.

A thorough review may include federal trademark applications and registrations, state records, business names, websites, and other evidence of marketplace use. Earlier users can have rights even without a federal registration. Conducting the search before adopting and filing for a mark can help a business identify legal risks while it still has the option to choose a different brand. No search can guarantee that a mark is free of conflict, but it provides a basis for making an informed decision.

U.S. Trademark Applications Based on Current Use

A use-in-commerce application, filed under Section 1(a) of the Trademark Act, is available when the applicant is already using the mark in qualifying commerce with the goods or services identified in the application. The applicant must provide the required dates of first use and a specimen showing how the mark is actually used in relation to the claimed goods or services.

U.S. Trademark Applications Based on Intent to Use

An intent-to-use application, filed under Section 1(b), allows an applicant with a bona fide intention to use a mark in commerce to apply before that use begins. This can be useful when a business has selected a mark but has not yet launched the relevant goods or services. The mark cannot register on an intent-to-use basis alone: the applicant must later submit an acceptable allegation of use and meet the applicable deadlines. Priority based on the filing date can be established if the mark eventually registers with the USPTO.

U.S. Applications Based on Foreign Filings

A business with trademark filings outside the United States may have additional routes to U.S. protection:

• Foreign application priority — Section 44(d): An applicant may claim priority from a qualifying foreign application if it files its U.S. application within six months and meets the statutory requirements. A foreign application priority claim alone is not a basis for U.S. registration.
• Foreign registration — Section 44(e): An applicant with a qualifying registration of the same mark in its country of origin may seek U.S. registration based on that foreign registration, subject to USPTO examination.
• Madrid Protocol extension — Section 66(a): The holder of an international registration may request an extension of protection to the United States through the Madrid System. The USPTO examines that request under U.S. trademark law.

An international application or registration does not automatically grant trademark protection in the United States. The appropriate filing route depends on the applicant’s existing filings, countries involved, and plans for use.

International Trademark Applications Based on a U.S. Filing

A U.S. trademark application or registration can serve as the basis for seeking protection in other countries through the Madrid Protocol. An eligible applicant files one international application through the USPTO and selects the Madrid System members where protection is sought. The USPTO certifies the application and forwards it to the World Intellectual Property Organization (WIPO), which sends the request to each selected member for review.

An international registration does not automatically grant trademark rights in every selected country. Each member examines the request under its own laws and may grant or refuse protection. The goods and services sought internationally also cannot be broader than those covered by the underlying U.S. application or registration.

For the first five years, the international registration depends on the U.S. filing on which it is based. If the U.S. application is abandoned, or the U.S. registration is canceled or narrowed during that period, the international registration may be affected to the same extent. We help clients evaluate whether the Madrid Protocol is appropriate for their expansion plans, select jurisdictions, and coordinate the filing and review of international applications.

Certification Marks

A certification mark indicates that goods, services, or their providers meet standards established by a certifying organization. The standards may concern characteristics such as quality, materials, methods of production, geographic origin, or qualifications.

Unlike an ordinary trademark that identifies a business as the source of its own goods or services, a certification mark is generally used by authorized third parties whose goods or services meet the certifier’s standards. The certifying organization owns and controls the mark.

How Long Does Trademark Protection Last?

Trademark rights can continue indefinitely while the mark continues to function as a source identifier and the owner maintains its rights. A federal registration also requires timely maintenance filings and, where applicable, renewal. Continued use alone does not excuse a missed USPTO maintenance deadline.

State Trademark Registration

State trademark registration provides protection under the laws of the state where the mark is registered. Most states require the mark to be in actual use in that state before an application can be filed, rather than permitting an intent-to-use filing. Applicants generally must identify when use began and provide examples showing the mark used with the goods or services. Requirements vary by state. In California, for example, an applicant must submit specimens showing use in commerce in California.

Torani Law P.C. helps clients develop trademark filing strategies in the United States and internationally. We evaluate the proposed mark, clearance search results, the goods or services involved, current or planned use, and the markets where protection is needed. Based on each client’s business objectives, we recommend an appropriate course of action for pursuing and maintaining trademark registrations.