Trademarks

Yes. A US application must be filed first, but need not be registered yet before initiating foreign trademark applications.

A trademark application must specify one or more classes of goods and/or services that the mark will be associated with. It is a good practice to do a trademark search for the same or similar versions of the mark for which you will submit a registration application. The results of the search are useful and what those results mean to an applicant depend on such factors as what classes another’s mark is already registered or pending before the USPTO in, and how similar their mark is to yours.

It depends. Assuming that a business owner cannot obtain the desired domain by purchasing it, an alternative name or phrase may be devised and its availability as a domain name may be determined. In the case where an existing company name cannot be used as a domain name, the company may consider registering a domain name for a brand name for a product or service offered by the company and that is different from the company name. Instead of selecting a different word or phrase for use as a domain name, one could consider modifying the first choice desired mark for use as a domain name that is available. This may include shortening or modifying the word or phrase of the mark, such as by adding dashes between words of a phrase, abbreviating it or else registering a domain name for just the first word of a phrase. Similarly, one may register their desired first choice word or phrase as a website domain with a different top-level domain (TLD) (e.g., use a .co where .com is not available).

A company having more than one brand attached to various products or services can have domains for each one and direct users to a single website (or a specific page of a different website) from the various brands’ website entries. With respect to how selecting and registering a domain name relates to trademark rights being sought or those rights of third parties, the considerations are similar to how a trademark examiner considers a trademark application under the “likelihood of confusion” standard. That is to say, registering and using a domain name to a particular mark may constitute infringement of another’s trademark rights where such use of the corresponding website is for a sufficiently similar product or service that the third party provides and has pre-existing trademark rights to the mark. Similar considerations may apply to social media handles.

Yes. Under current US trademark law, such a logo presented in a trademark registration application is examined under the same legal standards as any other logo. However, such a logo most likely is not eligible for copyright protection under current US law.

The registered trademark symbol ® may only be used in connection with a mark if the mark has been registered with the USPTO. Proper use and placement of the ® symbol with the mark gives third parties “constructive notice” that the mark is federally registered. As with patent marking, use of the ® symbol by the trademark owner results in an alleged infringer being deemed to have had notice that the mark is protected by a federal trademark registration. In the absence of a federal trademark registration, or while such an application is still pending, the trademark owner may instead utilize the “TM” symbol (for a good) of the “SM” symbol (for a service) to signify and provide notice to third parties that the user of the mark claims ownership of it (aka common law trademark rights). Note that using the aforementioned marking where there are no issued patents or pending patent applications covering it is a violation of federal law and could subject one to penalties.

No. This is not permitted under federal law unless and until the mark is registered as a trademark by the United States Patent & Trademark Office (USPTO).

Like patents and trademarks, an owner or a trademark must assert their intellectual property rights in their mark. Absent being made aware by an owner or other third party, the USPTO does not typically initiate any enforcement actions against infringement on behalf of intellectual property rights of private owners. Policing thus refers to the practice of how a trademark (or patent or copyright) owner becomes aware of potential infringers. Enforcement is then how infringement is addressed by an owner through legal means, which may initially involve the trademark contacting the alleged infringer, as by a cease and desist letter.

Yes. Typically, I work with the trademark attorney handling the foreign company’s trademarks in the respective country to file US trademark applications on behalf of the company.