Gobal Reach For Global Trademarks

1. LEGAL FRAMEWORK

   Federal and state protection

   In the United States, trademark law is governed by federal and state law. Federal trademark law is governed by the Lanham Act, which governs the scope of trademark use, registration, protection and enforcement. Other federal statutes governing trademark use include:

   the Federal Trademark Dilution Act of 1995 and the Trademark Dilution Revision Act of 2006; the Anti-cybersquatting Consumer Protection Act of 1999; the Anti-counterfeiting and Consumer Protection Act of 1996; and the Trademark Counterfeiting Act of 1984. Trademark rights in the United States are not exclusively governed by federal law. State trademark statutes and common law provide overlapping protection regarding the registration and enforcement of trademarks. However, the requirements and scope of state trademark protection vary by state. Generally, federal trademark law does not pre-empt state trademark law unless a conflict exists between federal and state law.

   International treaties

   The United States is a signatory to:

   the Paris Convention; the North American Free Trade Agreement; the General Agreement on Tariffs and Trade; the Agreement on Trade-Related Aspects of Intellectual Property Rights; the Madrid Protocol; and the Singapore Treaty on the Law of Trademarks. The Madrid Protocol is an international treaty that allows a trademark owner to seek registration in any of the signatory countries which have joined the protocol by means of a single international application.

   On October 1 2008 the United States ratified the Singapore Treaty, which was the first international instrument to recognise non-traditional trademarks marks such as colour, sound, three-dimensional, olfactory, taste and touch marks. The Singapore Treaty also addressed:

   the form and means of transmittal of communications with trademark registries of the signatory nations and authentication of signatures; relief when an applicant or a holder has missed a deadline in connection with a procedural action; and issues relating to the recording of trademark licences. 2. UNREGISTERED MARKS

   In the United States, trademark rights are conferred through use. Federal registration of a trademark will be granted only upon a demonstration of bona fide use of the trademark in connection with the relevant goods or services in interstate commerce.

   Under federal law, unregistered marks are afforded trademark protection provided that such trademarks have been used in interstate commerce or in foreign commerce with the United States. However, the commercial use of the mark must be in the ordinary course of trade. Use of an unregistered mark solely for the purpose of reserving rights is insufficient to confer trademark protection.

   Under the Lanham Act, the owner of an unregistered trademark is protected against infringement and dilution of the mark by others. Section 43(a) of the Lanham Act provides that anyone that uses any mark or false designation of origin in connection with any goods or services that is likely to cause confusion, mistake or deception as to the source or sponsorship of goods or services shall be liable in a civil action. The Lanham Act also protects unregistered trademarks from dilution. However, the protection of unregistered marks may be limited to the geographical area where the unregistered mark has been in actual use or has acquired recognition.

3. REGISTERED MARKS

   Federal trademarks registered on the Principal Register are entitled to several benefits, including:

   a legal presumption of the registrant's ownership of and exclusive right to use the mark; federal jurisdiction over an action concerning the mark; incontestable status of the registration upon fulfilment of certain requirements; and the ability to prevent importation of infringing foreign goods. Requirements for registration

   An application to register a mark must be filed by the owner of the mark or, with respect to 'intent to use' applications, by the party which itself (or via a licensee) has bona fide intent to use the mark. Trademark registrations may be owned by individuals or entities.

   Representative of applicant

   Provided that no other attorney or law firm has previously been appointed as a representative, it is unnecessary for an attorney to file a power of attorney or any other document authorising his or her appointment as the owner's representative. Generally, any attorney who meets the statutory requirements and appears...