United States: Protecting Your Good Name—Some Special Considerations for Protecting Maritime Trademarks in the United States

Last Updated: March 9 2011
Article by Susan B. Flohr

Whether you are a cruise line, drilling company, vessel owner, cargo owner, shipbuilding and repair company, watercraft rental company or employment company crewing vessels, protecting your name and trademarks around the world is vital to your business. The unique challenges facing maritime companies arise out of the nature of the goods and services provided by these companies and the locations in which they do business. Strategies for protecting names and commercial identity may differ from one country to the next. This is because trademarks are territorial and thus creatures of the laws of each sovereign state, with the exception of a few regional authorities such as the European Union.

Strategies for those seeking to register their trademarks and service marks in the United States will vary depending in part upon whether applicants: are U.S. entities or non-U.S. entities; sell goods or provide services; can show the requisite "use in commerce"; and possess a non-U.S. registration or application.

In the United States, there are several paths to registration:

  • U.S. companies can file applications based on either "use in commerce" or a bona fide intent-to-use the mark (Sections 1(a) and 1(b) of the Trademark Act, 15 U.S.C. §§ 1(a) and 1(b) respectively).
  • Non-U.S. companies have these options as well, and additionally can file applications based on their own national applications or registrations in their home countries or a regional registration such as a Community Trademark Registration ("CTM") issued in any member state of the EU (if they have such registrations) either under certain provisions of the Trademark Act (§§44(d) and 44(e); 15 U.S.C. §§ 1126(d) and (e)) or based on an International Registration filed under the Madrid Protocol System.

There are pros and cons to each approach, and while this article cannot cover them in depth, it will touch on the most foreseeable issues and point out some tactical options.

Challenges of Registering Maritime Trademarks in the U.S.

Proving "Use in Commerce" for Maritime Products

For a U.S. application based on "use in commerce" or a bona fide intent-to-use, the applicant eventually must assert use of the mark in commerce, and prove such use before a registration will issue.

In the case of products, to satisfy the "use in commerce" requirement, the mark must be placed in any manner on the goods, their containers, the displays associated therewith, or on the tags or labels affixed thereto; if the nature of the goods makes such placement impracticable, then the mark must be placed on documents associated with the goods or their sale, and the goods must be sold or transported in commerce.

The requirement of proof of use on products is more challenging to comply with if your products are bulk products such as oil, coal, or other bulk products shipped without any labeling or packaging. Where fuel is transported by tanker truck on land, the company brand may appear on the tanker and satisfy the affixation requirement. But what about where the fuel or other bulk products are transported by vessel? The likelihood is high that the vessel will be chartered, and thus the name of the company selling the bulk products and its brand will not likely appear on the vessel. How are such companies to prove the requisite use of the mark on the goods in commerce?

In such cases, Section 45 of the Trademark Act permits shipping invoices, bills of lading or other shipping documents showing the mark associated with the goods, or webpage screenshots depicting the products associated with the mark to satisfy the requirement for "use in commerce" where the nature of the goods makes normal affixation impractical. However, a mere assertion of impracticability will not suffice; the record must establish that the goods are of such a nature that traditional trademark use is impracticable.

Trademark examiners at the United States Patent and Trademark Office ("USPTO") may not initially accept alternative specimens unless the impracticability of complying with the affixation requirement is fully supported. Where the applicant's goods are not sold in gallon drums or at gasoline pumping stations, but rather are sold in bulk, stored in tanks and delivered through pipelines, tanker trucks, barges and other methods of bulk transportation, there should be no difficulty as such a scenario is analogous to the natural gas, grains, and chemicals sold in bulk or transported via tanker cars, all of which are examples specified in the TMEP as prototypical of impracticability for affixation of the mark to the goods.

Because the power of the federal government to register marks comes from the Commerce Clause of the Constitution, the sales of such goods bearing the mark must be in commerce lawfully regulated by Congress in order for the applicant to rely on such use to obtain a federal trademark registration.

The term "use in commerce" includes sales of goods either in commerce between the U.S. and a foreign country or in interstate commerce among the several states. Sales of bulk products, bunkers, or oil by either a U.S. entity or a non- U.S. entity to U.S. customers are typically in commerce. Sales of such goods by either entity to foreign customers located in the United States or within its territorial waters are also typically in commerce. Sales of bulk products, bunkers, or oil by a U.S. entity to a foreign customer in a foreign country would not constitute a sale in commerce. But the question of whether or not sales of such goods by either a U.S. or non- U.S. entity to foreign customers at sea constitutes "use in commerce" may depend upon a variety of factors such as the ownership of the vessel and citizenship of the purchasers, and the outcome would likely be very fact-specific. As a result, there may be some risk in attempting to rely on such sales to establish "use in commerce" for registration purposes. For prospective applicants with other options, such as non-U.S. entities with national, regional or international registrations, it may be best to file on one of those bases instead.

Proving "Use in Commerce" for Maritime Services

In contrast to proving use for bulk products, proving use of a mark for services, such as providing bunkers at sea, is more straightforward since there is no affixation requirement. Use of a mark for services is easily established by printed or online promotional materials including screenshots of web pages showing use of the mark in association with the sale or advertising of the services, provided that the service is being rendered in commerce.

"Use in commerce" for services can be established when the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce. They can also be established if the services are rendered in more than one state, or in the United States and a foreign country, and the person rendering the services is engaged in commerce in connection with the services.

Rendering a service in commerce typically requires advertising the services across state lines, or having customers who travel across state lines to obtain the services, or licensees rendering the services in more than a single state. When services are rendered at sea, there are analogous uncertainties to those raised above with regard to whether or not goods sold at sea comprise commerce regulable by Congress. Services rendered in U.S. waters can establish use in commerce, but for services rendered outside of U.S. waters, the satisfactory establishment of use in commerce may also depend upon the extent to which those services are advertised or promoted in the United States in connection with the service mark, whether the customers receiving the services are U.S. citizens or U.S. vessels, whether the services are provided through U.S. ports, and other similar factors.

The Advantages of Filing Based on a Foreign Registration or Application

Avoiding the Requirement to Prove Use

If you are a non-U.S. company, you have other options that do not require proving use of the mark in commerce. If you own an application or registration in your home country, or a regional one such as a CTM, you can file a U.S. application based on your foreign filing. Alternatively, you can file for an International Registration through the WIPO and designate the United States under the Madrid Protocol. Each of these options has a number of advantages over filing in the U.S. based on use or intent-to-use. Most importantly, these options remove the requirement of establishing "use in commerce" prior to issuance of the registration.

In order to avoid losing your trademark rights in the U.S., you will need to be able to prove use eventually, at least between the fifth and sixth year after registration when the statutory use declaration is due, and then later for renewal at the ten year anniversary. Nevertheless, this approach gives the company five years to work with counsel to develop acceptable specimens prior to the deadline for filing. Note, however, that the U.S. registration is reliant on the non-U.S. registration that may be vulnerable to cancellation.

Securing a Broader Description of Goods and Services

Another advantage of filing based on a foreign national registration, CTM regional registration, or an International Registration through the Madrid Protocol is that any of these options would likely allow you a broader description of goods and services than if you file directly with the USPTO based on use or intent to use. There are two reasons for this. First, the USPTO is known for its stringent regulations on the manner in which applicants can describe goods and services. Second, you must be using the mark for all the goods and services covered by the application prior to registration, and this requirement naturally would limit the breadth of goods or services you can claim.

Conclusion

Tactical considerations for maritime companies seeking to register their trademarks and service marks in the United States will differ depending upon whether or not they are U.S. entities or non-U.S. entities. This article has highlighted some of those considerations. For a U.S. entity, there is no way forward but to prove "use in commerce"; for a non-U.S. entity, it may be wise to select an alternative route to registration.

This article was first published in the February 2011 edition of Maritime Reporter.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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