United States Customs Bureau :
U.S. Customs officials can demand disclosure of the identity of any trademark on imported goods, and under certain circumstances, seize goods bearing infringing marks.
Congress has authorized Customs Bureau involvement in preventing the importation of counterfeit goods, gray-market goods and goods bearing infringing trademarks. Such goods can be seized at the border. However, what happens to them after seizure depends on which category they fit into.
Counterfeit goods will be destroyed or given to charity after removal of the trademark. Infringing marks will be sent back to the place of origin, or enter the U.S. after removal of the mark. Or, upon consent of the U.S. trademark owner, counterfeit goods or goods bearing infringing marks may enter the U.S. In order for the Customs Bureau to take action at the border, the U.S. trademark owner will have to record with Customs their federally registered mark (or trade name if used for six months).
Additionally, trademark owners typically have to alert Customs of specific counterfeit or infringing activity, just as a practical matter, since Customs has far too many trademarks to effectively monitor without such assistance.
United States Patent and Trademark Office (USPTO) :
The federal agency presiding over the registration and maintenance of patents and federal trademarks. While attorneys must have an additional license to practice patent law before the USPTO, no such requirement exists for the practice of trademark law before this body. Trademark applications and all other correspondence should be addressed to “The Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.” Initial trademark applications should be directed to “Box NEW APP / FEE,” while amendments to allege use should be directed to “Attn. AAU,” and statements alleging use or requests for an extension of time to file a statement of use should be directed to “Box ITU / FEE.” On the Internet, you can find the USPTO at http://www.uspto.gov .
Use as establishing priority :
In the United States, the first to use a mark generally has priority, and can exclude all subsequent users of identical or confusingly similar marks. This is in contrast to most other countries which grant priority based on the first to register a mark.
The implications for those starting their businesses in the U.S. and expanding later into other countries. Sometimes the first to use in the U.S. is thwarted by another company in a different country who had the foresight to register the mark first. When this happens, the U.S. trademark owner may have to pay a licensing fee just to use its U.S. mark in another country. Worse yet, the U.S. trademark owner may be entirely prevented from using the mark in that country.
Use in commerce :
The “bona fide use of a mark in the ordinary course of trade and not made merely to reserve a right in a mark.” 15 U.S.C. §1127. For federal registration purposes, using a mark in interstate commerce is required whether applying for a trademark under an actual use application, filing an Intent to Use application, or filing a renewal application. Whereas use in commerce refers merely commercial use in trade, Interstate commerce occurs only when the commercial use in trade affects either directly or indirectly commerce that occurs across state lines.
Typically, the trademark applicant engages in interstate commerce by using the mark on goods that are sold and transported across state lines, or by selling or advertising to sell services to customers from other states or countries.
Use, (proper) :
To use a mark properly, the trademark owner should:
- Always use the mark as an adjective of the underlying product rather than as a noun, as in “people prefer BUDWISER brand beers” rather than “people prefer BUDWISER;”
- Italicize, underline, capitalize or boldface the mark when it appears in text, in order to set it out from the generic word for the product ;
- Affix the mark to the goods or services;
- Provide proper notice of trademark rights.
Use requirement :
In order to qualify for protection a trademark must be used in commerce. For the purposes of federal registration, use in commerce alone is insufficient, and use in interstate commerce is required.
Utilitarian functionality :
According to this doctrine, the functional features of a trademark, or those features having primarily a utilitarian purpose, are not granted protection. Where product elements such as shape, color or design are necessary to improve the saleability of a product, or because the product requires the trademarked element to function optimally, then that feature is not protected by trademark law.
