May 28 | 2015

Top Trademark Filing Tips for Foreign Applicants

The United States Patent and Trademark Office (“PTO”) is an obvious forum for foreign trademark owners looking to protect their trademarks. There are, however, many key differences between the legal and procedural landscapes for trademarks in the U.S. and foreign countries. The following represent the most common problems that arise for foreign trademark applicants and tips for overcoming or minimizing these problems.

#1 Applicants must understand and appreciate the “first to use” principle

In the U.S., a trademark registration is not needed to enjoy trademark rights. Unlike the majority of countries that follow the “first to register” principle, the U.S. determines trademark rights on the “first to use” principle. This means that a trademark owner that uses a trademark in U.S. commerce before another party files an application with the PTO will have priority of rights over that applicant in the geographic regions where the mark is being used.

Because a user of an unregistered “common law” trademark can have superior rights over a registered trademark, trademark clearance is critically important. A trademark search beyond a PTO database search is crucial to assessing the level of risk faced by a foreign trademark applicant, because it looks beyond the PTO database and also includes state, common law and Internet and domain records. Foreign applicants often avoid clearance searching, but in light of the “first to use” principle and the relevance of common law rights, a comprehensive search is advised.

Tip #1: Conduct a comprehensive search of federal, state and common law trademark records when deciding whether to file an application in the U.S.

#2 Applicants must precisely identify the goods and services

The PTO requires more precision in an applicant’s identification of goods and services than the trademark offices of many foreign countries. This means that when a foreign trademark applicant files an application with the PTO, that applicant needs to be prepared to specify items that might not have needed specification in the applicant’s home country or with CTM applications.

 Tip #2: Avoid indefinite phrasing such as “including,” “comprising,” “such as,” “and similar goods,” “products,” “concepts,” and “like services.” Instead, use phrases like “namely,” “consisting of,” and “particularly.”

 While precision is important, an applicant should not be too precise so as to excessively narrow the relevant scope of protection set forth by the identification of goods and services. This is particularly important at the initial stage of filing the application, because once an application is on file, the identification of goods and services can be narrowed, clarified and even deleted, but never broadened.

#3 Applicants must understand the principals of “use” and “bona fide intent to use”

Use

Because of the important role that actual use of a trademark plays in the U.S., the PTO and federal courts take very seriously an applicant’s allegations of trademark use and/or bona fide intent to use a trademark in the future. Applicants who disregard or misinterpret these principles risk losing trademark rights, because nonuse can be grounds for cancellation.

Under U.S. law, a trademark is used in connection with goods when it is placed in any manner on the goods and the goods are sold or transported in interstate commerce. For trademarks used in connection with services, the services must already be rendered in interstate commerce (not just available for purchase), and the trademark must be used to sell or advertise those services. Pre-sale advertising of goods and services is not enough to demonstrate use for a trademark application. There are no set minimum thresholds for number of sales that constitute use, but the general rule is that the sales must be more than an attempt to simply reserve rights in the trademark.

Allegations of use before the PTO apply to all of the goods and services identified in the application. Therefore, an assertion of trademark use should not be made until the applicant can verify that it has used the trademark in commerce in connection with all of the goods and services listed in its application. The same requirement applies in mandatory post-registration filings during the sixth year of registration and in each ten-year renewal application, when all owners of registrations must demonstrate that their trademarks are being used in commerce. Whenever the applicant (or registrant) alleges use, it ensures that the mark is being used for all goods and services listed at the time of the filing (otherwise, any unused goods or services must be deleted from the application or registration).

While a misunderstanding of these requirements may not be discovered during the PTO examination process, it is likely to be caught by a competitor who could then oppose registration of a mark or even seek to cancel an existing registration. Even innocent mistakes can lead to a voided application or a cancelled registration in certain circumstances, so applicants must be careful.

Tip #4: Keep records of when and where goods are first shipped and sold in the U.S. and when services are first performed in the U.S. and do not file allegations of use with the PTO until your records support such an allegation for all goods and services identified in the application.

Tip #5: Delete any goods or services that are no longer relevant to a trademark in order to reduce the possibility that others will challenge the trademark on grounds of nonuse or worse, fraud.

Bona Fide Intent to Use

Every U.S. trademark application that is not based on actual use in commerce must include a verified statement that the applicant has a “bona fide intent to use” the trademark in U.S. commerce as of the date of the application. This is true of applications based on a foreign registration, foreign application, or an International Registration through the Madrid Protocol. The requirement is ongoing in that any subsequent request for an extension of time to demonstrate use requires a fresh verified statement.

While there is no actual definition of what constitutes a “bona fide intent to use,” such intent is measured objectively by the actions of the applicant at the time the intent is declared. It is rare that the PTO will question an applicant’s bona fide intent, so this issue often arises when another party, usually a competitor, objects to registration. Some examples of activities that courts or the PTO have deemed to sufficiently demonstrate a “bona fide intent to use” include:

  • conducting a trademark availability search;
  • using a mark in test marketing;
  • obtaining necessary regulatory permits;
  • attempts to find licensees; and
  • obtaining commercial space in which to perform the services.

Examples of a lack of bona fide intent to use have been shown by:

  • an unrealistically broad listing of goods and services;
  • a defensive intent to prevent others from using the trademark;
  • the filing of many intent-to-use applications and subsequently abandoning them;
  • the absence of any steps or planning to use the trademark; and
  • lack of industry-relevant experience.

Tip #6: Only file trademark applications that your company actually intends to use in the U.S., and be realistic when deciding what goods and services are included in those applications. Keep a business plan and a record of all steps taken to facilitate such use.

In conclusion, navigating the nuances of U.S. trademark law and PTO practice can be tricky. Adherence to these tips will help minimize mistakes and, in turn, improve the chance of securing and maintaining trademark rights in the U.S.

By Adam W. Sikich, Esq.

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