The “first sale” doctrine provides that a person who knowingly purchases an item or product bearing a trademark receives the right to display, sell, or otherwise dispose of that particular item or product without incurring liability for trademark infringement. One notable thing is that it is only where the trademark owner has authorized the initial sale of a product that the first sale doctrine is applicable. To move this discussion forward, we now switch gears and explore “Trademark Ownership and Rights in the United States,” another key area of trademarks.
Trademark Ownership and Rights in the U.S.
In the United States (U.S.), the actual use of a mark in commerce comprises the criteria used to give and obtain trademark rights. This is specific to being the first to use a given mark in association with or on specific product(s), good(s), and/or service(s) in the marketplace. As mentioned in a past blog post, a bona fide use of the mark in the ordinary course of business is required for use in commerce. While the specific service(s) must be rendered, the law requires a mark to be displayed or used in the advertising or selling of the service(s) if the mark is a service mark. Notably, under sufficient control of the mark owner, a licensee may make a qualifying first use. Importantly, the benefit of the assignor’s first use in commerce is carried along with a valid trademark assignment.
One crucial thing to note is that, contrary to copyrights and patents, there is no specific duration or term after which a trademark expires. However, the action or inaction of the trademark’s owner may lead to the loss of its protection. Essentially, federal registration is not mandatory since trademark rights are based on use. However, the owner is free to seek registration in the U.S. Patent and Trademark Office in cases where a mark is used in interstate commerce. Further, the trademark owner can file an “intent-to-use” application if they have a bona fide intention to use a mark in commerce and have not done so yet.
When it comes to ownership rights in the U.S., mark owners benefit in a number of ways by registering their trademarks. Implying that the mark is considered to have been in use throughout the U.S. as of the date the application filing was made, the fact that a “constructive use” of the mark nationwide constituted under registration is the most significant benefit. This means that expansion into new territorial boundaries is possible without the fear of a court prioritizing a confusingly similar mark that was first used after the application date of the registered mark.
It is also worth noting that it is possible to license a mark while one still retains the ownership of the specific mark. Contrary to the ownership of copyrights, where the statute (codified as17 U.S.C. § 101) defines “ownership transfer” as including the grant of an exclusive license, the ownership of the licensed intellectual property is not conveyed by a true exclusive license. This means that retaining the ownership of a mark and granting an exclusive license to the mark are all the same thing to the trademark owner. Notably, pursuant to 15 U.S.C. § 1060, trademark ownership may also be transferred, in writing, via an assignment.
In the next blog post and Part IX of the series, we shall switch gears and hammer on “The Proper Use of Trademark Under the Trademark Law .”
Stay tuned for more legal guidance, training, and education. In the interim, if there are any questions or comments, please let us know at the Contact Us page!
Always rising above the bar,
Isaac T.,
Legal Writer, Author, & Publisher.