USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
2.4 Use in Commerce Trade mark rights in the US stem from use, not registration. See 2.2 Essential Elements of Trade Mark Protection . 2.5 Notices and Symbols A registrant may give notice with the words or “Reg. US Pat. & Tm. Off.” or the ® symbol. Such notice may only be used with registered marks. Failure to use the notice can limit the ability to recover damages. For common law trade marks, TM (or SM) may be used to put others on notice of claimed rights. There are no requirements to use TM or SM. 2.6 Related Rights Trademarked logos that are sufficiently original and otherwise comply with copyright can be protected by copyright. Similarly, product design trade dress may also be protected by design patents. A design that is protected by a utility patent is presumed to be functional and as such cannot be protected under trade mark law. 3. Copyright Ownership, Protection and Rights 3.1 Types of Copyrightable Works 17 USC § 102 sets forth the categories of works which may obtain copyright protection. Copy - rights cover all original works of authorship fixed in any tangible medium of expression, whether published or unpublished. Generally, a work is considered original if it embodies some mini - mum amount of creativity. This includes but is not limited to literary works, musical works, cho - reographic works, graphic, pictorial and sculp - tural works, motion pictures, sound recordings and architectural works.
states or a foreign country, or providing servic - es out of state or with a foreign country. Use is shown with specimens which depend on what is being offered. • Goods: Mark is on the goods, packaging, labels, tags or displays. • Services: Mark is on advertising of the ser - vices. Use as Source Identifier Consumers must associate the mark as identify - ing source. Purely descriptive use is unlikely to be sufficient. Registration not Required Unregistered marks can be protected at com - mon law. However, these marks may only be protected in the geographic area where they are used and a zone of expansion. Registration Trade mark rights exist under common law and statute. The Lanham Act provides a federal reg - istration system and federal cause of action for infringement of marks that are likely to cause confusion. Federal registration provides benefits, such as a nationwide priority to use a mark, as well as a presumption that the mark is valid. In contrast, a common law trade mark is only protected in the areas where used and a zone of expansion. Registrations subsist as long as maintenance documents and renewals are timely filed and the mark is not abandoned. Common law rights exist unless abandoned. provides national rights. 2.3 Trade Mark Rights
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