Under state common law, trademarks are protected as part of unfair competition, and trademark registration is not required.
States'' statutory provisions on trademarks differ, but most have adopted a version of the Model Trademark Bill (MTB) or the Uniform Deceptive Trade Practices Act (UDTPA).
The MTB provides for trademark registration while the UDTPA does not.
While under federal law, registration is not required to establish rights in a mark, nor is it required to begin use of a mark. A federal registration, however, can secure benefits beyond the rights acquired by merely using a mark.
For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and is entitled to use the mark nationwide.
Federal law provides the most extensive source of trademark protection, although state common law actions are still available.
In brief, the scope of trademark''s protection is relatively broad in the US. Under some circumstances, trademark protection even extends the scope to not only covering words, symbols, and phrases, but also including other aspects of a product, such as its color or its packaging. And the requirement of well-known mark''s protection can be easily met, particularly after the 2006 TDRA, once the distinctiveness of a well-known mark is attacked under the criteria of "likelihood of dilution", trademark infringement occurs.
China
China is a first-to-file nation, the trademark protection under the Chinese law is based on the principle of registration. Hence, non-registered ordinary trademarks are not protected under the law. This practice is consistent with the civil law. The principal feature of trademark law in civil law countries is that, rights arise through registration. It means that a trademark owner creates his exclusive right of the mark by having it set down on the government''s roll of trademarks. In its strictest interpretation, there are no trademark rights without registration. Therefore, trademark pirates can take advantage of this system to usurp a mark by winning the race to the register before the rightful owner.
However, the TRIPS Agreement extended the protection granted to trademarks to include service marks,
stating that the Paris Convention''s articles related to the protection of well known trademarks shall be applied to service marks as well.
Most importantly, it states that a mark will be protected in a nation, even if it is not actually used or registered in that nation, as long as the mark is well-known in that nation. In order to be consistent with the TRIPS agreement, the new PRC Trademark Law Art 13 addresses that once a trademark is determined as a well-known mark in China, a greater scope of protection is afforded, that is, they are legally protected even if they are "not registered in China".
Furthermore, under the PRC Trademark Law, an ordinary registered trademark can be exclusively used only on identical or similar goods or services covered by its registration, but a well-known mark registered in China has the exclusive right to be used not only on identical or similar goods or services, but also on dissimilar and non-identical goods or services.
Though China has gradually expanded the protection scope of well-known marks, compared to the United States, well-known marks are protected subject to certain limits.
3.3. Judicial Protection and Administrative Protection
The United States
As mentioned above, well-known mark''s protection in the United States is built upon the theory that well-known mark is a private property. Thus the trademark infringement cases are judged following the principle of "no trial without complaint". Whether a trademark is a well-known mark or not is determined by judicial body. Cases are proceeded by judicial procedure. When a trademark holder finds his or her rights being infringed, he or she may seek remedies through either federal or state trademark law , or even anti-unfair competition law. This system effectively prevents administrative interference.
China
Prior to the 2001 Trademark Law, China''s trademark protection was entirely under the control of administrative authorities. When a well-known mark runs into conflict with an enterprise name, the well-known mark owner can only apply to the competent authorities for canceling the enterprise name, if he believes that another person''s registration of the enterprise name is likely to deceive or confuse the public. The competent authorities must examine the enterprise name under the Provisions on Registration and Administration of Enterprise Names to find out if the circumstance of "being likely to deceive or confuse the public" does happen. There was no judicial review of administrative decisions.
