This article has been written by Cheyanne Pereira, currently pursuing her B.A.LLB. from Amity University, Kolkata. The focal point of the article is the Rights in Unregistered marks in the United States and the various ways in which they can be protected and maintained after explaining some of the basic nuances of trademarks.

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The Lanham Act, also known as the Trademark Act of 1946, is the primary federal statute governing trademarks and service marks in the United States. This Act provides protection for trademarks and service marks registered with the United States Patent and Trademark Office (USPTO). However, it also protects unregistered trademarks and service marks through Section 43(a). In this blog, we’ll be exploring the rights in unregistered marks in the US, the protection provided by the Lanham Act Section 43(a), and how to take advantage of and protect those rights.

The purpose of the Lanham Act is to protect trademarks and service marks from infringement and to ensure that consumers are not misled or confused in the marketplace. The Lanham Act provides a variety of remedies for trademark and service mark infringement, including civil and criminal penalties. 

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Along with the provisions of the Lanham Act, there are provisions under common law principles and state statutes available for unregistered marks. In order to ensure that you are protecting your unregistered trademark efficiently, it is essential to understand various aspects of trademark law in the United States. Differences between registered and unregistered marks, protection for each of them, and the benefits of registration are some important factors to keep in mind if you are considering applying for registration for your trademark or if you are simply curious to know more about trademarks in general. Let us first take a look at what a trademark is.

Meaning of trademark 

A trademark is a word, phrase, symbol, or slogan that can be used individually or in combination with each other to provide a unique identity to a particular good or service( referred to as a service mark). It helps a consumer to recognize the owner or provider of a particular brand and associate the business with them. It is essential in providing originality to the products in the marketplace and allows it to establish its individual presence that will aid the consumers in distinguishing between the product and its competitors. 

History of trademarks in the US

  • The act of marking goods to indicate ownership can be traced back to 5000 B.C. in ancient Europe. Scientists have identified certain markings on artifacts that have been recovered from ancient Egypt. These markings could help in identifying the origin of these artifacts.
  • Merchants’ marks originated around the 13th century and were used throughout Europe to provide a mark of authenticity and quality assurance.
  • The Bakers marking law was the earliest legislation enacted by the British parliament in 1266 where bakers were required to put their marks on the goods baked by them.
  • In the US, the history of trademarks can be dated back to 1791 when Samuel Beck, a manufacturer of sail-cloth, petitioned for federal trademark law. This petition was referred to Secretary Jefferson, who recommended to Congress that manufacturers should be allowed to register for trademarks. However, Congress did not act on this suggestion. Instead, the states helped in the development of trademarks through doctrines such as passing-off. 
  • To protect itself from international trademark infringement, The US entered into an agreement of reciprocal protection of trademarks with Belgium, France, and Russia in 1868 and 1869.
  • In 1870, the first US federal law was passed to protect trademarks. This was known as the Federal Trademark Act of 1870. Averill Paints was issued the first trademark on October 23rd, 1870 under this Act.
  • However in 1879 three cases known as the Trademark cases were consolidated and brought as an appeal before the Supreme Court in which it deemed the Act of 1870 to be unconstitutional.
  • On 3rd March,1881 another trademark law was enacted which was then revised several times later on.
  • In 1886 the world-famous Coca-Cola logo was introduced and received its trademark in 1893.
  • The Lanham Act was enacted on 5th July 1946 and was later amended in 1988.

Types of trademarks

The Lanham Act provides for the protection of several types of trademarks. The different types are trademarks, service marks, weak trademarks, strong trademarks, trade dress, trade names, and so on.

Examples of famous trademarks

  • Apple – It was founded by Steve Jobs, Steve Wozniak, and Ronald Wayne in 1976, the brand’s high-quality products are easily identifiable by its famous logo of a half-eaten apple. The logo of the brand was originally inspired by Isaac Newton and was designed by Ronald Wayne in 1976. Between 1976 and 2015 the logo has undergone several changes in design. The company’s consistency in delivering high-quality and innovative products since its inception has made it a trustworthy and reliable brand and they enjoy a loyal consumer base despite the high cost of their products. The logo is recognized even by people who do not use Apple products. The first trademark for the company logo was registered in 1979. The company has registered over 1200 trademarks since then with some trademarks still pending. The company has undergone several legal battles for trademarks, the most current one being its attempt to trademark a logo of a full apple instead of the traditional bitten apple.
  • Facebook- The world’s most famous social networking website having around 2.99 billion users from around the world. It was founded in 2004 by Mark Zuckerberg, the logo was designed by Mike Buzzard. The colors of the logo were selected due to Mark Zuckerberg’s color blindness. The logo for the website is more or less unchanged from its original design.

Service Marks

The term service marks is used with reference to services instead of products. If a company offers services instead of goods and is using a word or logo to advertise its services, it is known as a service mark. Some examples of famous service marks are 

  • Nike’s popular slogan “Just do it” which is recognized by all. The slogan is unique and special because it is powerful and motivating and it depicts the brand exactly as it was intended to. It’s one of the most well-known service marks in the world. It was introduced in 1987 by Wieden and Kennedy for Nike’s first advertisement campaign. Although the need for this tagline was questioned by many, the positive feedback from the customers and sports community ensured its continued use even today. Nike has many other trademarks as well like its famous swoosh symbol and so on.
  • McDonald’s- This American fast-food chain has close to 40,000 franchises all over the globe. It has several trademarks like the Big Mac and McNuggets which are easily associated by consumers with its name. Its famous logo of the golden arches was designed by Stanley Meston in 1952. In 1953 the Phoenix, Arizona location was the first to introduce the logo.

Strong Marks

Strong trademarks are those that make it easy for your customers to identify you as the owner or source of the goods/services. The stronger the trademark of a company, the more difficult it is for it to be stolen or copied by others. If the mark is easily identifiable, it makes it easier to have it protected from unauthorized use in the future. These trademarks are unique, for example, words that don’t even exist like Kodak or Exxon. There are three types of strong trademarks. These are arbitrary, suggestive, and fanciful.

  • Arbitrary trademarks

These are words that have no relation to the goods or services. A common example of this is Apple. It is distinct and innovative as it does not have any relation to the quality of the electronics and services provided by Apple.

  • Fanciful trademarks

These words most likely do not exist or have no meaning and are created just in relation to your brand. These trademarks provide one of the strongest forms of legal protection as it’s very difficult for someone to choose the same word as you for their products. If the word has not been used before and does not exist in any dictionary it is almost impossible for it to be claimed as someone else’s. Examples of fanciful trademarks are- Pepsi, Polaroid, Adidas, and Kodak.

  • Suggestive trademarks

These are trademarks that may provide a slight indication of the quality of your goods or services but do not provide a direct indication. It is distinctive and it is also a good marketing idea as it has some relation to the product. Examples of suggestive trademarks are- 

-Netflix (It indicates towards movies or shows also known as ‘flicks’)

-Coppertone (suggests that the tanning products will give the skin a copper-like sheen)

-KitchenAid (products that help in the kitchen)

Weak Trademarks

These trademarks can be protected but only up to a certain extent. However, to ensure maximum protection for your brand it would be preferred to opt for a strong trademark. The different types of weak trademarks are descriptive, merely descriptive, and generic.

  • Descriptive trademark

These trademarks describe the goods or services and are usually not protected as they do not provide a distinct identity or quality of the product. It can often be mistaken for a suggestive mark but the difference between the two is that suggestive marks are only hinting at the characteristic or the quality of goods or services, whereas descriptive marks on the other hand directly provide an idea of what the product is offering. It requires no imagination on the consumer’s part as it directly indicates what the product is all about. Examples of descriptive trademarks are “creamy” for ice cream, or UPS (United Parcel Service).

However, sometimes descriptive trademarks can help in quickly identifying the origin or the source of the products and therefore they can be registered to the supplemental or principal register under Section 2(f) distinction.

  • Merely Descriptive trademarks

These indicate the characteristics, functions, or qualities of the product and are quite difficult to protect as trademarks but it’s not impossible. They can be provided with protection. They can be registered on the supplemental register but cannot achieve registration on the principal register.

  • Generic trademarks 

These are not trademarks. These are just regular terms used on a daily basis to describe products or services. They are not eligible for registration. they do not indicate the owner and would make it difficult for other companies to use these common terms to describe their goods, for example, words like “shoes” and “bicycle”.

Trade name

A trade name is one that is used to identify your business or partnership rather than the goods or services. It is also referred to as a DBA or a “doing business as” name. These names cannot be registered for trademark protection under the Lanham Act until and unless they are able to indicate the source of the goods and services instead of just the company. The registration for the same differs from state to state but in general, most states require registration to be done either through the state government or county clerk’s office. However, registration for a trade name does not provide the same protection as a trademark registration. Examples of trade names are Visa, Walmart, eBay, etc.

Trade dress

Trade dress is the visual concept or design of your product. This includes the packaging, appearance, shape, size, and so on. To make a product eye-catching and aesthetically pleasing it’s important to give it a unique appearance. The distinctiveness of the trade dress will enhance the marketing of the product as customers will be able to easily recognize the product just by looking at it. Important requirements for trade dress are uniqueness and functionality. It is possible to acquire protection by the Lanham Act as well as protection under 15 U.S. Code § 1125 without registration. Examples of trade dress are the classic red wrapper of Skittles candy or the shape of the Coca-Cola bottle.

Collective marks

Collective marks are defined in Section 45 ( 15 U.S.C. § 1127) of the Trademark Act. These marks are used collectively by an organization, group, or association to distinguish themselves from individuals who are not affiliated with the group. The two kinds of collective marks are:

  • A mark used collectively by a group to signify its membership as mentioned above and,
  • Marks are used by a group to differentiate their goods and services from another group.

An example of collective marks is McDonald’s® for the American fast food chain or “Girl Scouts” for Girl Scouts cookies. They work the same way trade and service marks do. If a person is applying for a collective mark for commercial purposes, he has to indicate his intention to do so in his application.

Certificate marks

A mark of certification provides the customers with the assurance that the product or services have met the standard that is expected of it. It is used by people other than the owners of the mark. It assures the consumers that the products have been tried and tested and are legitimate. They are most often owned by big commercial groups or trade groups. The owner of the trademark sets the standards that are to be met and the quality of the products or services must adhere to the same. The owner himself does not use the mark but he permits other parties to do so if their products meet the standards set by him. There are certain categories that are:

  • Products or services that are specific to a geographical location.
  • Quality assurance or how they are manufactured
  • The labor put into the creation of the goods or services has been provided by a particular organization or union.

An example of this is PARENTAL ADVISORY EXPLICIT CONTENT to provide caution or warnings for content that is not appropriate for children. 

The Lanham Act of 1946

The Lanham Act or Trademark Act of 1946 is a national system that provides trademark protection. By obtaining registration under this Act people can avoid unwanted use or copying of their trademarks, dilution of their trademarks, and prevention of false advertising.

History of the Act

Before the Lanham Act of 1946

Though the Lanham Act was not the first legal form of protection of trademarks, it was the first to provide a comprehensive and unambiguous understanding and provisions for trademark registration and protection. Before the Lanham Act was introduced, the other federal acts for trademark protection were not very successful or effective. Trademark protection was more or less available under common law provisions and Congress then later on went on to introduce the Federal Trademark Act of 1870.  However, in 1879, three cases were brought before the Supreme Court. They were:

  • United States V. Steffens; 
  • United States V. Wittemann; 
  • United States V. Johnson;

The three cases as mentioned above, were consolidated into a single appeal before the apex court. After the Act of 1870 was declared unconstitutional, a few other legislations were passed:

  • 1881 Act- A new bill authored by Representative Hammond that limited trademark registration to commercial activities with foreign countries. Thereafter, the United States continued to enter into international agreements of protection and became a member of the Paris Convention for the Protection of Industrial Property. Industrial activities were growing but trademark registration was moving at a very slow pace. 
  • A 1905 Act and then a new Act which was a broader version of the 1905 Act, introduced later in 1920. 
  • Section 3 of the Act of 1920- Willful or intentional misrepresentation of the source of merchandise, became a predecessor for Section 43(A) of the Lanham Act of 1946.

The predecessors of the Lanham Act had several flaws which proved to be barriers for those who registered for trademarks. This was because there were several Acts that created ambiguity and confusion and did not address issues related to service marks. Also, there was no expiration for trademark registration. Even in situations when people did nothing to maintain their registration, registrants did nothing to preserve their marks. The Lanham Act predecessors also provided for relief in a limited manner: 

 – when there is a case of passing-off another person’s goods as your own

 – when a person was able to prove that his business was the sole origin of products that were alleged to be involved in false advertisement

– when a group of people with the same grievances protested the misuse of a designation of geographical origin.

The Lanham Act

  • The movement for alternative trademark legislation started in the 1920s  by Fritz Lanham, after whom the Act was named, in the 1930s. The Act was signed by President Harry Truman and approved by Congress on July 5, 1946. And took effect from July 2, 1947. It has since been amended multiple times. 
  • The Lanham Act has four subchapters. The first three were added in 1946. The fourth subchapter was added thereafter. The first two subchapters deal with the regulation of trademark registration-Principal Register and Supplemental Register. The USPTO or United States Patent Office provides separate registers. The Principal Register deals with “distinctive” trademarks. The Supplemental Register is for marks that have not yet acquired distinctiveness. For example, merely descriptive trademarks. The next two chapters relate to trademark infringement and the remedies for the same and the Madrid Protocol.

Trademark Eligibility

In order to be eligible for registration under the Lanham Act, a trademark has to meet two requisites which are that it needs to be used in commercial activities and it has to be distinctive or unique.

  • Use in commerce– Section 45 of the Act states that a mark should be used for commercial purposes in order to be eligible for protection. The USPTO has the authority to strike a trademark if the owner does not use their mark. If a mark is not being used actively for commercial activities at the time of registration, it will still be allowed only if the person who is applying agrees in writing, the intention to use the trademark for commercial activities at a particular date set in the future. As per the rules of the Lanham Act, the person who uses the mark in commercial activities first shall be granted registration.
  • Distinctiveness- There are four categories of distinctive trademarks and they are arbitrary/fanciful, descriptive, suggestive, and generic. If a mark is arbitrary or suggestive, it is taken to be inherently distinctive, and rights to the mark are decided only by priority of use. Generic terms are not qualified for trademark registration. 

Case Law: Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc. (1983)

In this case, the plaintiff (Zatarain’s), said that their mark was being infringed upon by the defendant, Oak Grove Smokehouse, and therefore they should be charged with the same.

  • The plaintiff used to manufacture and sell food products. It was famous for its batter mixes used while cooking fried foods. It registered the terms ‘Fish Fri’ and ‘Chicken Fri’ as trademarks for its Fish and chicken batter mixes. The defendant, on the other hand, was producing products with almost similar packaging and used the terms ‘Chicken Fry’ and ‘Fish Fry’. The plaintiff decided to bring a suit of unfair competition and trademark infringement against the defendant for this.
  • The Plaintiff’s side claimed that the terms used by the plaintiff for its products were suggestive terms.
  • The defendants’ side argued that they were descriptive terms. The plaintiff’s products were also not unique to the market because there were a minimum of at least four other companies in the market that were offering similar products for fried foods and using the terms “fish fry” and “chicken fry” to describe the characteristics of the products sold by them.

The issue that was before the court was whether marks that are descriptive terms are protected by trademark law if they do not hold a secondary meaning according to the customer’s knowledge of the products.

  • The district court held that the term “Fish Fri” was a descriptive term and not a secondary term. The court discovered that this term now held a secondary meaning in the New Orleans area and was eligible for protection under the trademark laws. However, the defendant was not wrong to use the term “fish fry” for their goods and it was, therefore, a fair use of the term and had not committed an infringement of the plaintiff’s mark. 
  • For the term “Chicken Fry”, the court held that the term had not received secondary meaning and ordered the cancellation of the term as a trademark.
  • As for the plaintiff’s claims of unfair competition, the court held that there were notable differences in the appearance of the two products and stated that there was no chance of confusion for the customers. And so this claim was dismissed as well.
  • The court applied four tests to decide if the term was descriptive in nature. They were: a)a Dictionary definition of the term b)an Imagination test for the term c)how the term was beneficial for the defendant’s use d)the Use of the term by the manufacturers. It was held that descriptive terms cannot be protected by trademark laws unless they hold a secondary meaning.

Post Lanham Act

The Trademark Counterfeiting Act of 1984

It is a Federal law that criminalizes the intentional trafficking of goods and services and the use of counterfeit marks (18 U.S.C. § 2320).

Penalties for violation are: 

  • Monetary compensation or imprisonment or both
  • Severe penalties for repeated offenses

This act also amended the Lanham Act by providing civil remedies for trademark counterfeiting-(15 U.S.C. § 1117(b)) and (15 U.S.C. § 1116(d)).

Trademark Dilution Act of 1995 (FTDA)

This was enacted by Congress to protect owners of a well-known or “famous” trademark, from dilution by their competitors and the likelihood of confusion. Owners of such a trademark are eligible for an injunction against a person who uses the trademark if the mark has become famous and causes dilution of the unique quality of the mark. But they can only do so if the other person has started using the trademark after it has become widely known and associated by the general public with the goods or services provided by the actual owner.

Trademark Dilution Revisionist Act of 2006

Signed in 2006 by President Bush, this statute enhanced the rights of owners of famous trademarks by amending the 1995 Act mentioned above. The owners of famous marks often failed the “likelihood of confusion” test for infringement. For example, in the case of Moseley v. V Secret Catalog (2003), the Supreme Court ruled that consumers would not likely be confused between “Victoria’s Secret” and  “Victor’s Little Secret.” This Act overturned the court’s decision and put forward six factors that a court can refer to while dealing with a dilution case. The amendment states that the original owner must only prove a “likelihood of dilution” instead of proving that the competitor caused trademark dilution. Remedies under the Act include recovery of damages, lost profits, treble damages, and so on.

Trademark Infringement and Trademark Dilution

Nike is a renowned brand that is trusted and recognized by consumers all over the world. If another company copies the famous Swoosh logo on Nike shoes and produces fake products it will profit by selling its products with the Nike name. It will also harm the consumers. A customer who purchases a pair of Nike sneakers may be under the impression that he is getting an original product but might get a knock-off product instead that will be damaged after just a few days of using it. Trademark infringement creates disadvantages for both consumers and the owners. Trademark dilution is when a company tarnishes the name of a renowned brand and as a result, dilutes it. In this case, the law protects the original creator of the goods. This form of protection is available to trademarks that are well-established and widely recognized by customers. For example, if a fast food company uses the Nike tagline in its advertisements a customer most probably won’t confuse it and think that Nike is now making or selling fast food. However, the impact of the tagline may get diluted.

Anticybersquatting Consumer Protection Act of 1999

The Congress introduced the ACPA in the year 1999 as an amendment to the Lanham Act (15 U.S.C. § 1125(d))  to protect domain names from cybersquatters. They prohibit cybersquatters from registering marks that can dilute or cause confusion over an already existing trademark. It was passed with the intention to protect American businesses and promote growth. It provides nine factors for the court to determine if there has been bad faith.

Remedies are available in the form of injunction, damages, transfer, forfeiture, or cancellation of the domain name. The Court of Appeals became the first appellate court to apply the ACPA in February 2000. The case that it was applied in was the case of Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc. 

Trademark Modernization Act of 2020

The Congress introduced the Trademark Modernization Act (TMA) to amend the Lanham It introduced several amendments to trademark law like new mechanisms for cancellation of trademark registrations and by making it easier to get an injunction. Before a trademark owner seeking injunction would have to prove the possibility that they would be facing irreparable damage. Until 2006 irreparable harm was assumed in infringement but the apex court removed this presumption in eBay v. MercExchange.The TMA put forward that the eBay decision,  eliminating the said presumption of irreparable harm, would not apply to trademark cases but to patent cases.

Importance of the Lanham Act

Before the enactment of the Lanham Act by Congress, the protection of trademarks and the rights of business owners were at risk. There were no proper facilities in place and even the laws that were prevalent at the time were ambiguous in nature. The unique marks of the goods and services could be copied and used to gain unfair profits and there was no proper recourse. 

Confusion and disadvantages for the customers were another issue. Without proper trademarks, it’s difficult for customers to put their faith in a brand and thus brand loyalty would not be able to exist. There are a few important points to keep in mind if you are trying to use the Lanham Act to protect your business. These are:

  • That you as the original owner have proper ownership of the trademark
  • That you use that trademark publicly to conduct your business and advertise the sale of your goods
  • That your competitor(The other business owner or company) is using a trademark that will likely cause your business some financial loss
  • If the other businesses are using a mark that will confuse your customers due to its similarity

Registered and Unregistered Trademarks

Registered Trademarks 

A trademark is a mark registered with the United States Patent and Trademark Office (USPTO). A registered trademark is beneficial as it provides for legal rights and ownership of a trademark. There are several benefits that you as a business owner can enjoy by registering your trademark. They are:

  • Your trademark gets public notice:

Your trademark will be listed in the United States Patent and Trademark Office’s database of trademarks. A registered trademark is recognized by the Circle R symbol, whereas an unregistered trademark is denoted by using the letters TM. 

  • Registering your trademark helps in building a reliable reputation for your brand and assures your customers that your brand meets the suitable quality standards.
  • A trademark registered federally provides you with protection by serving a “constructive notice” to warn future or potential infringers.
  • You can use your registration to file for further trademark protection in foreign countries.
  • The right to sue a person or company that is using your trademark illegally 
  • When you apply for trademark registration,  you are able to ensure that you do not accidentally infringe on another person’s trademark. Unknown infringement could also put you at the risk of getting sued by the original trademark owner. You may have to pay damages to compensate the original owner of the trademark.
  • Unregistered trademarks are also that are used in the United States and to a certain extent are protected under the law, if you are mark is unregistered the burden of proof is higher if someone infringes your mark. By registering your mark the burden of proof is diminished 

Difference between common law, federal, and state registration

Common law rights

Under common law, the rights to the trademark go to the first person to use the mark.  These rights however cannot be enforced nationwide. For example, a small store in town can only enforce its rights in the area where it is based. These marks are more difficult to enforce than other trademarks because in order to do so you would have to prove that your mark is recognized by consumers and easily associated with your goods or services.

State registration

The second type of registration is found at the individual state level. Each of the states has their own database. Your trademark registration will be applicable in that particular state only.

If you extend your business beyond state lines you will have to apply to register your trademark in that state. Not all states have their own databases, so a third party may not be aware of your rights.

Federal registration

A federal registration is the most well-protected form of trademark protection. It provides your mark with validity throughout the nation. Your rights will extend throughout the territories and your registration rights will last as long as your trademark is still being used and prove your use of the trademark with sufficient evidence. A maintenance document will have to be filed once in a while to prove the same. If you do not keep up the maintenance you will lose your rights to your trademark. 

International trademark registration

If you apply for trademark registration with the  United States Patent and Trademark Office, it will only prohibit the infringement of your trademark within the United States. If you want to expand your business to foreign countries and are worried about infringement there. You should file for trademark registration in other countries to ensure maximum protection. There are two ways to apply for international protection 

  • Filing individual applications in every country with the help of a lawyer 
  • The Madrid protocol. 

The Madrid protocol

The Madrid Protocol is an international treaty that enables a trademark owner to obtain protection against infringement in multiple foreign countries by filing a single application. By filing this application you can apply and obtain protection of your mark in around 100 member countries, so long as your application meets the requirements of the member country. You cannot file it with the United States Patent and Trademark Office directly. You can file this application through an extension of protection of trademark infringement from the International registration with the World Intellectual Property Organisation as mentioned in section 66 of the Lanham Act. The process involves the filing of a traditional application in the United States. The application must be filed in the native language and a fee must be paid. If there is no denial given by an office within a period of 18 months, then the mark is taken to be protected internationally. It is a cheaper and more convenient alternative because it enables you to register your mark by paying the registration fee for every country. It becomes easier than hiring a separate lawyer for every country. Translation mistakes may take place while filing applications in different native languages. This can be avoided through the Madrid protocol. However, if you want your Madrid Protocol application to be accepted then the registration of your United States application must be completed successfully first. If the application in your country is not successful then your Madrid protocol application will not be granted either.

The basis for filing a trademark application

Use in commerce

  • An application can be filed if the owner is using his mark to transport or sell his products or services to consumers living out of the state. To be eligible for trademark protection under this category the owner will have to prove that he is actively using his mark in commercial activities 15 U.S.C. § 1051(a)) of the Lanham Act of 1946.
  • The owner will also have to demonstrate how he uses his trademark. He can do this by submitting a sample of his packaging, tags, or labels used on his products. For services, advertisements, webpages or websites may be shown.

 He will also have to submit the date when he first started using it.

  • Two categories of dates for every class of products and services need to be provided and they are:- (i) the first time the mark was used anywhere; and (ii) the first time it was used in interstate commercial activities or activities between the US and a foreign country. 

Intent to use the mark

  • If an owner is not yet using the mark but intends to do so within the next few years, he may file an application under the intend-to-use category.
  • However, the mark will not be registered until and unless the applicant starts using his mark and proves the same-15 U.S.C. § 1051(b)).
  • The owner must provide a sample of his use of the mark in commercial activities to the USPTO.
  • This document is named the Statement of Use or Amendment to Allege Use.

Case Law: Jack Daniel’s Properties, Inc. v. VIP Products LLC (2023)

  • The facts of this case are as follows. VIP Products LLC produces and sells rubber dog toys which are called “Silly Squeakers” which bear a resemblance to several famous beverages but they change the name and add something fun and dog-related to it for example instead of the famous beverage name “Mountain Dew” they label their product as “Mountain Drool”. 
  • The company sold over a million Silly Squeaker rubber toys between the years 2007 to 2017. The “Bad Spaniels” squeaker toy was introduced by the company in 2013. It is shaped in a way that somewhat replicates a bottle of Jack Daniel’s Whiskey and contains an image of a dog on it.
  • The  VIP products label says  “Old No. 2, on your Tennessee  Carpet.” whereas the Jack Daniels label contains the phrase “Old  No.  7  Brand Tennessee Sour Mash Whiskey;   the toy also contains a tag that states that it is not in any way related to the Jack Daniels company. 
  • The Jack Daniel’s company told VIP to stop production and sales of the Bad Spaniels toy in the year 2014 to which the company responded by filing a declaration that the toy in no way infringes or dilutes the trademark of Jack Daniel’s name or appearance and the design of the bottle is not eligible for protection under trademark laws.
  • They also asked for a cancellation of the registration for Jack Daniel’s bottle design from the Patent and trademark office in the USA.  
  • whether VIP Products LLC was entitled to the defense of fair use?
  • whether Jack Daniel’s bottle was generic or distinctive in nature?
  • VIP’s claim was denied by the district court and Jack Daniel’s motion was granted instead.  It was held by the court that VIP was not entitled to the defense of fair use.
  • The court also held that Jack Daniel’s bottle is not generic in nature, it is distinctive and nonfunctional and so as a result of this they are eligible for protection under trademark laws.
  • The district court delivered a verdict in favor of Jack Daniel’s and allowed for a permanent injunction against VIP products which prohibited the sale of more units of the Bad Spaniels dog toy.
  • The Supreme Court of the United States delivered a verdict in Jack Daniel’s Properties, Inc. v. VIP Products, LLC on 8th June 2023. Delivering a unanimous verdict which was written by Justice Elena Kahgan, the court issued a judgment in favor of Jack Daniel’s as well and ruled that the Bad Spaniel’s dog toy was not protected by the First Amendment of the United States Constitution.
  • The court did not comment on whether the VIP Products infringed the trademark rights of Jack Daniel’s. It did however shed light on the issue of the use of Bad Spaniel’s name and design and stated that it did fall outside of the protection of the First Amendment. 
  • During this case, several other well-known brands like Levi Strauss, Campbell Soup, Nike, and others filed amicus briefs in support of Jack Daniels.
  • The court’s decision was a huge victory for Jack Daniel’s and can also be considered a victory for other brand owners engaged in business in the United States.

The various types of applications that can be filed

There are several categories under which you can file for a trademark:

  • Traditional marks (words or designs) 
  •  nontraditional and non-visual marks (colors, shapes, sound, scent, etc.)
  • collective marks and certificate marks.

Some requirements to receive a filing date

  • Name of the business owner 
  • Place of residence for correspondence purposes
  • For designs or symbols, a clear image of the mark
  • An accurate list of products or services to which the marks will be associated 
  • The fee to file the application
  • Name of the legal entity if the application is not for a person
  • Citizenship or state or country 
  • The English translation for foreign words 

Some pointers to keep in mind:

  • Except for the information related to your payments, all the necessary information that is submitted, like an address or email address, will be added to the viewable public record on the USPTO website and other sites like Google.
  • It is very important for you to choose the kind of trademark you are applying for as it will determine how much protection will be available for your trademark.
  • Ensure that your trademark is not the same as or not similar to one that has already been registered and is in use by some other business owner.

After the filing procedure

  • A filing receipt and serial number will be assigned through mail or email.
  • Your application will be examined for three to four months after you file it.
  •  If the examiner raises any objections, they must be solved before proceeding with the registration.
  • Your application will be published in the Trademark Official Gazette and a Notice of Publication will be issued with the date of publication.
  • For use-based applications, a certificate of registration will be issued under Section 1(a) 
  •  Notice of Allowance will be issued for intent-to-use applications under Section 1(b).

Unregistered Trademarks in the USA

An unregistered trademark or is basically almost the same as a registered trademark however, unlike a registered trademark it has not been registered with the United States Patent and Trademark Office or a state office. It is also sometimes referred to as a “common law” trademark because it is protected by the state laws. It is not protected in the same way as a registered trademark either. An owner of an unregistered trademark can enforce his rights only within the geographical boundaries within which he conducts his business activities. The rights to an unregistered trademark will be given to the first person who has used it and he will enjoy these rights over the other mark users. A  bigger corporation most likely cannot prohibit a smaller business owner who has used the name before them, from using the name. (Example- Norman Mcdonalds drive-in case) .The legal rights regarding unregistered marks descend from a common law business principle: that if a business owner is conducting a business and enjoys the goodwill of his consumers, it is unfair for another business owner to use the same name which would confuse the first owner’s business and harm his profits. Even if the first business owner did not have a trademark registration, his rights would be protected by common law and state laws as well at least up to a certain degree.

Scope of protection under common law

  • As per common law in the United States, the ownership of a trademark is determined by continuous use of the trademark in business activities rather than just use of the trademark. Once the right to the mark has been established by a business owner his rights under the common law cannot be violated. In the case of Matal v Tam (137 S Ct 1744 (2017)), the Supreme Court discussed the enforcement of unregistered marks.
  • The scope of protection for unregistered trademarks is limited in nature but you can still protect it from infringement and dilution through common law. You can do this by sending a cease and desist letter. Most disputes do not reach the court. One of the main causes of this is a cease and desist letter. It is a formal letter through which you are notifying the competitor that you are now aware of what they are doing and would be willing to act against them through litigation if it’s needed. A cease and desist letter is the primary step. In sending such a letter you are also creating a source of evidence for yourself which you can use if you are facing lawsuits related to unfair competition. 
  •  Once an offender realizes that his practices constitute unfair competition he might just stop all such activities. But if he is conducting these activities intentionally, he probably is already aware of the consequences that he would be faced with. People usually try to avoid going to court. If the letter is ignored then you can try to sue the person in federal court. Around $5 billion was awarded in damages between the years of 2009 and 2017 in these cases.

Scope of protection for unregistered marks under state laws

Numerous states have enacted one of the following laws to help them in the regulation of unfair competition. These are:

  • Uniform Deceptive Trade Practices Act  UDTPA is an example of a federal legislation that deals with deceptive trade practices. This Act has been incorporated by several states like California, New York, Kentucky, Maryland, New Jersey, Idaho, Hawaii etc. 

It does not add or diminish the laws of any one particular state.  It covers almost all the matters and preventions that are mentioned in the state laws.  The states that have not adopted the Uniform deceptive trade practices have adopted similar laws to it. The main reason behind the UDTPA is to prohibit dishonest activities that cause harm to other business owners.  

  • Model state trademark bill- Adopted by more states, this was created by the International Trademark Association (former United States Trademark Association in 1949). It was proposed to enable the creation of uniform trademark laws to be implemented across the different states. It lays out a  framework for the various states which they can follow when they are formulating their own statutes. This ensures that business owners and companies are provided with uniform and equal protection across the various states and do not have to suffer due to their location.

Scope of protection for unregistered marks under the Lanham Act

So as per the common law principles for trademark rights, rights are established by using the mark and these rights operate only within the territory where it is being used. It is well understood that the scope of protection accorded to a mark is coextensive only with the territory throughout which it is known and where it has conducted its business. 

  • Therefore to enforce your rights without trademark registration you should prove that 
  • You are the primary user of the mark
  • You have garnered enough recognition in the area where you conduct your business to prevent other people from using your mark

Case law: Hanginout Inc v Google Inc (2014)

  • Hanginout, Inc. (“Hanginout”) brought a suit for trademark infringement, unfair competition as per federal law, statutory law in California, and common law against Google, Inc. on 26 November 2013. 
  • Hanginout complained that Google used the Hanginout trademark to promote its video interaction platform from March 2010 onwards and that Google’s Hangouts mark was very close to if absolutely identical to Hanginout’s mark and therefore was causing infringement of Hanginouts trademark.
  • Hanginout sought a preliminary injunction against Google from its use of its HANGOUTS mark for the further promotion of its video interaction services on its platform to prohibit use in either California or the whole of the United States and Google’s application for the trademark of Hangouts was suspended by the USPTO because of Hanginout’s Application.
  • Hanginout put up an argument stating that due to the fact that it offers and promotes its services under the Hanginout mark through its official website and the application Itunes, it had established a national customer base and should therefore be entitled to common law rights that should be applicable throughout the whole nation.
  • If Hanginout had properly established itself in the market within that particular territory?
  • If Hanginout was entitled to protection under the Lanham Act?
  • The Court heard arguments of both sides on April 25, 2014. It agreed with the fact that Hanginout was the first to use the mark but also stated that the company did not properly establish itself in the market within that particular geographical area.
  •  The Court felt that Hanginout was not able to provide enough evidence to support its claim of having actual registered users or positive growth in sales. In fact, it found that there was actually a sharp decline in the number of customer views for the Hanginout application.
  • The Court decided to deny Hanginout’s appeal and stated that it had not been successful in proving its rights under the Lanham Act.

Now section 43(a) of the Lanham Act provides some protection for unregistered trademarks in the USA. Section 43(a) makes a person liable if they have used any word, phrase, design, or any combination of these, or through false representations of the facts, may create 

  •  A likelihood of confusion among consumers about the origin or original producer of the products or services provided by a business owner. This is also known as a false origin claim.
  • Falsely misrepresents, characteristics or features or quality of the products or the services provided by him through advertisements or promotions. This is also known as a false advertising claim.
  • Third, businesses may bring a civil action against another business for dilution of their registered or unregistered marks. This provision allows businesses to protect their marks from being diluted or tarnished in the marketplace.

What is the plaintiff’s burden under the Lanham Act?

As per 15 U.S.C. § 1117(a), a plaintiff can seek the following remedies for the violation of his rights:

 (1) The profit of the defendant 

 (2) The plaintiff’s damages

 (3) The cost of the suit 

Usually, the plaintiff’s side chooses to focus on the profits made by the defendant instead of proving the damages incurred by the plaintiff. This is because:

  • The profits earned by the defendant are sometimes more than the damages incurred 
  • and placing focus on the profits of the defendant is easier than proving the damages incurred, and the plaintiff does not have to reveal his financial information.

The Lanham Act surely contains a vast amount of remedies for the plaintiff. However, the plaintiff must take all necessary steps to ensure that he or she has a sufficient amount of proof of the use of his mark and must be able to prove how the competitor’s use of his mark has caused him a loss or injury, especially in cases of false origin or source of goods and cases of misleading facts.

Unfair competition

Unfair competition refers to deceitful business activities that deliberately cause confusion amongst customers regarding the origin of goods and services and in turn harm another business’s reputation, finances, and customer loyalty. Some examples of unfair competition are:

  • Misleading or false advertisement of products or services offered,
  • Deceitful activities,
  • “Passing off” someone else’s goods as your own and thus hiding their true origin, and so on.

In the United States, unfair competition is usually regulated by the state. However, the Lanham Act which is a federal Act introduced to prevent infringement of marks, is often brought up while dealing with false advertising claims. If the state and federal laws clash or face some conflict with each other then the federal laws will prevail. In cases of unfair competition, the federal as well as state governments have the authority to charge offenders with criminal sanctions.

Unfair competition as per Section 43(a) of the Lanham Act

Federal laws related to unfair competition are available under Section 43(a) of the Lanham Act which protects business owners against false advertising and trademark infringement.

Several practices fall under the umbrella of unfair competition. Unfair competition need not always be intentional. It can also be unintentional. It can occur due to untrue statements made in relation to the goods or services of another business owner or counterfeiting of trademarked goods. 

The various monetary damages available to a plaintiff, if they are successful in winning their case under the Lanham Act are:

  • Punitive damages or treble damages, in extreme cases
  • Lost profits
  • Royalties
  • Funds for advertising the true source and characteristics of his good
  • Attorney costs and fees
  • Plaintiffs can also try to seek relief through preliminary injunctions or permanent injunctions which prohibit the defendants from continuing their unfair competitive business practices.

Endorsement and Sponsorship Confusion u/s 43(a)

Under the Lanham Act Section 43(a), businesses may bring a civil action against another business for endorsement or sponsorship confusion. False endorsement takes place when an influential person’s identity is used to promote a product or service without their consent or their permission. This may confuse consumers into thinking that the person has approved of the product by sponsoring or endorsing the brand. For example, the use of a celebrity’s identity to promote a product. This is often used in marketing to attract customers and manipulate them into purchasing the products. In this case, the mark is the identity of the person. This provision allows businesses to protect their marks from being falsely associated with another business in the marketplace.

In order to prove endorsement or sponsorship confusion, the plaintiff must show that the defendant’s mark is similar to their mark and that the defendant’s use of the mark would lead a reasonable person to believe that there is an endorsement or sponsorship relationship between the two parties. Additionally, the plaintiff must also show that they have been harmed by the defendant’s use of the mark. So for the example stated in the previous paragraph, the plaintiff has to prove that their identity was used and that it has influenced the public into believing that the plaintiff has sponsored the brand.

Case law: Ariana Grande-Butera v. Forever 21 (2019)

  • In this case, the pop singer Ariana Grande and the clothing brand Forever 21 had entered into discussions regarding a possible endorsement deal in December 2018. However, since Grande found the deal to be unsatisfactory she pulled out of it.
  • Forever 21 was on the verge of bankruptcy that year and since they were unable to acquire the deal it was going to be a difficult year for them.
  • Seeing no way out of the situation, Forever 21 decided to advertise their clothing by using a model who resembled the pop singer. The singer’s aesthetic and poses were copied and even her songs were used for the promotion of these advertisements.
  • Ariana Grande decided to bring a suit for false endorsement and sponsorship under the Lanham Act, California common law statutes, and the right of publicity law against the clothing brand.
  • Ariana Grande filed a suit for 10 million dollars. The clothing brand declared bankruptcy and so that brought the lawsuit to a stop for the time being. No further news of settlement has been made.

False Advertisements under the Lanham Act

Under the Lanham Act Section 43(a), businesses may bring a civil action against another business for false advertising for both registered and unregistered trademarks. This provision allows businesses to protect their marks from false or misleading advertising in the marketplace.

The components of Unfair competition under the Lanham Act- If you want to file a suit under the Lanham Act, you must first ensure that your case consists of the necessary elements. If these elements are not present, the court may rule in favor of the defendant. Therefore it is essential to analyze the elements that would help you make your case. These elements are:

  • The usage of untrue facts or statements
  • Actual or possible deception
  • If deception is material in nature
  • The involvement of commercial activities among different states 
  • Injury may occur or has already occurred 
  1. The usage of untrue facts or statements

Stating false facts or statements regarding the quality, characteristics, or features of a product or service is punishable under the Lanham Act. The statement made should be completely false. If the statement made is true but is likely to mislead the consumers then it may be a violation of the Lanham Act.

  1. Actual or possible deception

As mentioned in the point above, any statements likely to cause actual or possible deception could confuse the customers about the product and cause a loss for another business owner or company. An advertisement that is completely untrue is termed as actual deception whereas one where the title or facts are misleading is called likely deception.

  1. Nature of deception

This depends completely on the customer’s decisions regarding the purchase. If the customer’s decision to purchase is influenced by an untrue fact then the deception is material in nature.

  1. The involvement of commercial activities among different states 

Whether or not the products and services that are falsely advertised are being circulated between different states involved in commercial activities with each other.

  1. Injury may occur or has already occurred 

A business owner or company will be able to obtain relief under the Lanham Act if they are able to prove that they have suffered injury commercially due to the false advertisements although it is not a necessity to obtain a ruling in their favor.

Famous cases of false advertisements

Volkswagen case (2021)

  • On 29 March 2021, the FTC (Federal Trade Commission) filed a suit against the famous car company Volkswagen for advertising and selling around 550,000 vehicles between 2008 and 2015, that were supposedly “clean diesel” cars.
  • The advertisements by Volkswagen claimed environment-friendly and low emission standards for their vehicles. Their campaign’s most popular point was the low standards of pollutants being emitted into the environment.
  • However, in 2015, it was found that Volkswagen had installed illegal devices to cheat the emissions tests for their vehicles and in turn to cheat the customers as well.
  • The Federal Trade Commission asked Volkswagen to present the customers who had purchased these vehicles with two options (a) an option to buy back or (b) an option to modify the vehicle. 
  • This cheating scandal caused Volkswagen a hefty compensation of 9.5 billion dollars and a hit to the brand’s reputation.

L’Oreal USA clinical trial case (2014):

  • In this case, the cosmetic brand L’oreal was accused of serious false advertising claims.
  • The Federal Trade Commission stated that Loreal had made untrue statements regarding two of their products a)Lancome Genifique and b) Youth Code by claiming that these products had ingredients that would enhance genes and would make the user visibly younger.
  • It went so far as to claim that these benefits were found in the clinical trials for the products of the brand.

As per the directions of the Federal Trade Commission, the company was forced to stop their false claims for the products and are further prohibited from faking the test results of these products.

  • Violation of these directions could result in a fine of 16,000 dollars per violation for L’Oreal.

Kellogg’s Rice Krispies (2010)

  • Kellogg’s released a breakfast cereal that became very famous. They claimed that their cereal Rice Krispies was beneficial for the immune system and enhanced the immunity of an individual
  • In 2010 the Federal Trade Commission prohibited Kellogg’s from advertising this.
  • Kellogg’s had agreed to pay 2.5 million dollars worth of their products to charity.
  • However, in 2013 Kellogg’s fell into further trouble by making false claims that their cereal mini wheats could enhance intelligence and make a person smarter. It claimed to improve a child’s focus, cognition, and overall intelligence.
  • This led to another settlement of a hefty sum of 10.5 billion dollars.

How to take advantage of rights over Unregistered Marks in the US

Businesses may take advantage of their rights in unregistered marks in the US by bringing a civil action against another business for infringement or unfair competition. The plaintiff must show that the defendant’s mark is likely to cause confusion as to the source of goods or services or that the defendant engaged in false advertising or dilution of the plaintiff’s mark.

In order to take advantage of their unregistered rights, businesses must first determine whether their mark is eligible for protection under the Lanham Act Section 43(a). This includes determining whether the mark is a trademark or service mark and whether it is used in interstate commerce. Once a business has determined that its mark is eligible for protection, it should consider bringing a civil action against an infringer or unfair competitor.

Considerations to keep in mind when claiming unregistered rights

When claiming unregistered rights in the US, businesses should keep a few considerations in mind. First, businesses should ensure that they have a valid trademark or service mark and that it is used in interstate commerce. Additionally, businesses should make sure that their mark is not confusingly similar to another mark and that they have been harmed by the infringement or unfair competition. Finally, businesses should make sure that they have sufficient evidence to prove their case in court.

How to protect unregistered rights in the US

Businesses may protect their unregistered rights in the US by taking a few proactive steps. First, businesses should ensure that their mark is not confusingly similar to another mark by conducting a search of the USPTO’s database. Additionally, businesses should monitor the marketplace for potential infringers or unfair competitors and take action against them as soon as possible. Finally, businesses should consider registering their mark with the USPTO in order to obtain additional protection.

As per the common law principles in the US, the person who uses the mark first to conduct his business activities is known as the senior user and has rights to the marks above all the later users who may use similar or the same marks as him in those particular geographic boundaries where he uses it. So for this purpose, it is important to understand what qualifies as evidence of use in commerce. Usually, use of commerce requires the goods being sold to have the mark displayed on them and the advertisement and promotion of services of the goods with the trademark. So for example, just displaying a mark on your website is not going to be enough to prove that you provided products or services while using the mark. But what you can do is actually show that your products containing the mark or the services you have provided in association with the mark are available on your website for purchasing and that customers in several states. In this way, you can establish your common law rights in those particular states. Even the smallest of sales of your goods and services are enough for you to prove that you have the right to the unregistered mark by common law principles. 

Case Law: Christian Fellowship Church v. Adidas AD (2016)


  • A church based in Chicago called the Christian fellowship church filed two applications for the registration of the mark ADD A ZERO in 2005.
  • They intended to use this mark for clothes, caps, and other items that they were planning to sell to raise funds for charity purposes. One application was for a word mark whereas the other was a phrase with a cross. The records stated that the date where both marks were first used was early 2005.
  • Adidas AD on the other hand filed an application to register the mark ADIZERO for using it on their sports apparel in 2009. They also started using the mark in 2005 but in the month of December. 
  • Naturally, their application for this mark was refused due to the possibility of it creating confusion due to its similarity with the church’s mark ADD A ZERO. 
  • Adidas was keen to secure the rights to its mark and filed a suit to have the church’s mark canceled on the following grounds: 
  • The Church did not show enough evidence of the use of the mark for commercial purposes.
  • The church did not show continued use of its mark
  • The mark ADD A ZERO did not indicate the origin and was just informative in nature. 


  • If the church had enough sales to prove that they have a right to the mark?
  • If the public could easily associate the mark with the goods of the church?


  • With regards to the first ground, the trademark trial and appeal board(TTAB) found that the church had made a single sale of two hats, which according to them was not enough to prove the mark’s use in commercial activities. And so as per this ground, their trademark could be canceled 
  • On further appeal to the federal circuit, it was held that the church did not have to show proof that they made a sale and just had to make sure that their commercial activities affected the business activities between states in some way. 
  • The TTAB held that the general public could not associate the mark ADD A ZERO to the church as it was just a phrase for raising money for charity and so their mark was canceled.

However, the minimal sales can only take you so far as if you do not show a significant amount of sales have occurred over a certain period you can lose your rights. So as important as primary use of the mark is, maintaining your usage of that mark is equally important to retain your common law rights.

Now we come across the question of whether a person who has not used the mark in the United States but has sufficient rights to the trademarks outside the United States has the power to enforce those rights in dealing with the senior user of a similar or same mark in the United States. Usually, it would not be allowed as the rights are limited to the use of mark to conduct business within the US. However, the person may have a valid case under unfair competition laws.

Case Law: Belmora LLC v. Bayer Consumer Care (2016)


  • Bayer Consumer Care used the trademark “FLANAX” sodium pain relievers in Mexico while selling the same product as “ALEVE” in the United States ever since 1970. They own a registration in Mexico for FLANAX but not in the United States.
  • Belmora LLC. owns the registration for the trademark “FLANAX”  for sodium tablets in the United States which it acquired in 2005. Bayer Consumer Care filed a petition before the Trademark Trial and Appeal Board asking for a cancellation based on the deceptive use of the trademark in 2007 which was granted by the TTAB.
  • Belmora filed an appeal before the United States District Court which dismissed the motion by Bayer and set aside the judgment of the TTAB. It held that Bayer did not have rights to protection in the United States and could not possibly suffer economically as they did not use the mark to conduct business within the United States and fell outside the protection of the Lanham Act.
  • Belmora went further and filed a writ of certiorari before the Supreme Court on 20 October 2016 in which it stated that the decision taken by the Fourth Circuit is an encouragement to foreign business owners to use the provisions of unfair competition provided under the Lanham Act to sidestep the territorial limitations of the trademark laws in the United States.


  • If there had been any deceptive advertising by Belmora?
  • If Bayer’s rights could be protected by the Lanham Act?


  • The Fourth Circuit held that Bayer was right in its pleas as there was deceptive advertising on Belmora’s part.
  • The Supreme Court denied the writ petition on 27 February 2017. U.S. trademark. Therefore business owners in the United States should refrain from deception and intentional use of foreign marks as it may open up the scope for claims of unfair competition against them by those business owners.


The Lanham Act Section 43(a) is an important provision that protects unregistered trademarks and service marks in the United States. This provision provides businesses with a variety of rights, including protection from infringement and unfair competition. Additionally, this provision allows businesses to take advantage of their rights without having to register their marks with the USPTO. When claiming unregistered rights, businesses should keep a few considerations in mind and take proactive steps to protect their marks.

It can definitely be agreed that having their unique marks registered provides the owner of the mark with enhanced legal protection, various ways of seeking relief for infringement, and several other benefits, we can also agree to the fact that not every business owner has the required time or funds to pursue the registration of their mark. This is why the protection provided under section 43(a) is of utmost importance for those who wish to keep their marks unregistered but are also looking for ways to protect and maintain their rights against trademark infringement and unfair competition.

If you are looking to claim rights over unregistered marks in the US or have any questions about the Lanham Act Section 43(a) you can take a look at some frequently asked questions regarding trademarks below. Additionally, it is important to consult with a trademark lawyer regarding any other doubts you may have and to ensure that you face minimum hassle while claiming the rights to your mark. 

Frequently Asked Questions (FAQs)

Is trademark infringement a criminal offense?

Yes. There are situations that could possibly lead to federal criminal charges. Although the majority of trademark infringement cases are handled by the civil courts, some cases can lead to criminal charges which can lead to penalties like hefty fines, probation, and in major cases even imprisonment.

How long would it take to register my trademark with the United States Patent and Trademark Office? 

The time varies. It could take one year or several years to process your application. It depends on the procedure and whether or not any objections are found with your application.

What legal provisions are available to the owners of an unregistered trademark?

Section 43 of the Lanham Act protects unregistered trademarks but the scope for the protection of these marks are limited and protection is limited to the particular geographic areas where the mark is being used for commercial activities.

What are the grounds for rejecting a mark for registration?

There are several reasons why a mark may be rejected for registration. These are:

  • The mark may be deceptive in nature 
  • The mark is functional in nature
  • The mark is immoral in nature 
  • The mark is scandalous
  • The application has not been filed as per the prescribed procedure.
  • They lack distinctiveness 
  • It can cause confusion due to its resemblance to a previously registered mark.
  • It creates a false association with an institution or person.

Can certificate marks be registered?

Yes, they can. Certificate marks must provide a proper indication of what the owner of the mark is trying to certify, a copy of the standards used, and other requirements as prescribed.

Who can apply for trademark registration?

A natural person or any entity that uses the mark and has a good intention to use the mark can apply for registration of the same.

Is there any protection available for foreign trademarks in the United States?

The United States is a member of the Paris Convention and therefore it does provide some protection. According to section 44 of the Lanham Act business owners who have applied for the registration or have registered their marks in their own country can register their marks in the United States. A person can also protect their trademark through the Madrid Protocol by foreign registration to the United States.

Is PTO registration necessary for the owner of a trademark?

It is not compulsory to acquire PTO registration to protect your trademark but PTO registration may be beneficial for you in a number of ways:

  • It provides the owner with registration rights all over the nation
  • It provides other competitors with a notice that the mark is now owned by another business owner.
  • It provides you with the option to legally enforce your registration rights by filing a suit in a federal court if your mark has been infringed upon by someone.

You can avail a number of remedies from treble damages to attorney’s costs and much more.

Can a trademark owner lose their registration rights?

There are many ways in which a person can lose their registration rights. These are as follows:

  • Your mark will be taken to be abandoned by you if you do not use it constantly for a long period of time. That’s why continued use of your mark is very essential.
  • You can lose your mark if you let someone else use your mark without selling the rights to the mark to that person or company 
  • If your mark becomes generic over a particular period of time that may cause you to lose it as well.

Do I need to consult an attorney if I am facing infringement issues or a violation of my rights?

It is not necessary to but it is definitely recommended to hire an attorney if you are facing trademark issues or violation of your rights. An attorney would be able to provide you with proper legal advice and remedies and even build a strong case to protect your registration rights.



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