Ch5. Utility Models & Trademark Law Basics — Minor Innovations and Brand Rights

Utility Model Law (Petty Patent Systems)

Utility Model Subject Matter:
Protects the shape, structure, or combination of an article
Lower inventive threshold than a full utility patent
(No direct US federal equivalent; most commonly encountered in
Korea, Germany, Japan, and China)

Comparison with Utility Patent:
Utility model: articles/structures only (no methods or compositions)
Utility patent: methods, compositions, machines, manufactures
Term: utility model = 10 years; utility patent = 20 years (from filing)

No Substantive Examination (Registration-Without-Examination):
Only formal examination before registration
Substantive validity challenged later through post-grant opposition/invalidity
Registered rights are unstable until confirmed

Double Filing Prohibition:
Cannot file both a utility patent and utility model for the same invention
simultaneously in systems that have this bar
(US: only one application per invention is standard practice)

Trademark Law — Core Concepts

Trademark Definition (15 USC § 1127):
Any word, name, symbol, or device used to identify and distinguish
goods/services of one party from those of another
Includes: words, logos, colors, sounds, scents, trade dress

Key Functions:
Source identification
Quality assurance signal
Advertising and brand recognition

First-to-Use vs. First-to-File:
US: Use-based system — rights arise from bona fide use in commerce
Most other countries: registration-based — first to register wins
(US applicants can file "intent to use" applications under § 1(b))

Filing at USPTO:
File with the USPTO identifying goods/services by International (Nice) class
45 classes total; separate application per class is standard practice

Trademark Registration Requirements

Absolute Bars to Registration (15 USC § 1052):
Marks that are merely descriptive or generic
Marks that are deceptively misdescriptive
Marks comprising a national flag, government insignia, or official symbol
Immoral or scandalous matter (but see Brunetti, 2019 — § 2(a) partially struck)
Geographic terms that are primarily merely geographically descriptive

Relative Bars to Registration:
Likelihood of confusion with a prior registered or used mark (§ 2(d))
Dilution of a famous mark (TDRA — § 43(c))
Marks that falsely suggest a connection with a person or institution

Acquired Distinctiveness (Secondary Meaning):
A mark that starts as merely descriptive can become registrable
upon showing that consumers have come to associate it with a single source
(e.g., "American Airlines" — geographic + descriptive but registered via use)

Scope of Trademark Rights

Term:
10 years from registration date; renewable indefinitely every 10 years
Requires § 8 maintenance affidavit at 5-6 years and at each renewal

Non-Use Abandonment (15 USC § 1127):
Three or more consecutive years of non-use = prima facie abandonment
Rebuttable with evidence of use or excusable non-use
Trademark owner bears the burden to prove use

What Constitutes "Use in Commerce":
Affixation to goods, containers, displays, or tags for goods
Use in advertising for services (commerce regulable by Congress)
Must be genuine commercial use — token use is insufficient

Utility Model = Articles Only / 10 Years; Utility Patent = All Categories / 20 Years ★★★★★ : Subject matter scope and term are the key distinctions. Memory hook: minor improvement = 10 yrs; full patent = 20 yrs

Trademark = 10 Years + Unlimited Renewal ★★★★★ : Renewable indefinitely with continued use — potentially perpetual protection. Memory hook: brand = 10 yrs × forever

Trademark Non-Use Abandonment = 3 Consecutive Years ★★★★☆ : Three years of non-use creates a presumption of abandonment. Memory hook: 3 years unused = gone

Practice Questions

Q. Why might a company still file a utility model registration despite the lack of substantive examination?

Speed: the mark is registered quickly without waiting for examination. The registration creates a record date and allows the owner to assert rights against obvious copiers while the full patent application is being examined. In high-velocity industries (e.g., consumer electronics accessories), having any registration — even an unstable one — can deter infringers and support cease-and-desist letters. The risk of post-grant invalidity is accepted as a strategic trade-off. Once the utility patent issues, the utility model registration can be allowed to lapse.

Q. How does a trademark owner defend against a non-use cancellation petition?

Submit evidence of actual use in commerce within the relevant geographic market during the 3-year period before the cancellation petition was filed. Evidence includes: sales invoices, product packaging bearing the mark, advertisements, website screenshots with dated metadata. Mere advertising without sales is generally insufficient. Excusable non-use (e.g., FDA approval delay) may rebut the abandonment inference. A famous mark owner should maintain a “use documentation” file as a matter of routine practice.