Trademark Registration in the United States

Undoubtedly, the United States stands as the foremost economy globally. It is inconceivable for a multinational corporation not to establish its presence in the American market. Registering a trademark in the United States provides various advantages, including legal protection, brand recognition, and exclusive rights to use the mark in commerce. This article will provide an overview of the process for trademark registration in the United States and highlight some key features of the system.

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United States Trademark Registration Process

The expected timeframe for completing a straightforward application is around 8 to 12 months.

1. Trademark Search

Before filing a trademark application, conducting a thorough trademark search is essential to determine the availability of the mark. It helps identify existing trademarks that may conflict with the proposed mark. The United States Patent and Trademark Office (USPTO) provides an online database, the Trademark Electronic Search System (TESS), which allows applicants to search for existing trademarks.

2. Application

Once the trademark search confirms the availability of the mark, the next step is to file a trademark application with the USPTO. The application should include the applicant’s name and address, a clear representation of the mark, a description of the goods or services associated with the mark, a filing basis, specimen of use (if the mark is on use-in-commerce basis), and the filing fee.

3. Substantive Examination

Substantive examination begins after an examiner is assigned to the new application, which typically occurs approximately 4 months after the application is filed. At this stage, the USPTO will search the mark and examine the application to ensure compliance with the legal requirements. This includes reviewing the mark for distinctiveness and assessing its potential conflicts with existing trademarks.

4. Publication and Opposition

If the USPTO approves the application, it will publish the mark in the Official Gazette, allowing third parties to oppose the registration within 30 days. Oppositions may arise if any third party believes the pending application infringes upon their existing rights.

5. (a) Registration

f the mark is based on use in commerce, a foreign registration, or an extension of protection of an international registration to the United States, and no opposition is filed or successfully resolved, the USPTO will issue a certificate of registration, granting the applicant the exclusive rights to use the mark in connection with the specified goods or services;

5. (b) Allowance and Registration:

If the mark is based upon the applicant’s bona fide intention to use the mark in commerce and no opposition has been filed, the USPTO will issue a notice of allowance after the publication period. In order to receive the registration, the applicant must first submit a statement of use (SOU). A SOU cannot be filed more than thirty-six (36) months from the mailing date of the notice of allowance. Extensions of time are granted in six-month increments. The first six-month extension begins to run from the expiration of the six-month period following issuance of the notice of allowance. Up to four additional six-month extensions can be requested, with a showing of good cause. If the SOU is accepted, the USPTO will issue a certificate of registration.

6. Renewal:

Between the 5^th and 6^th year following the date of registration, Registrant must file a Declaration of Continued Use (or Excusable Non-use) in order for the registration to remain in force. Between the 9^th and 10^th year after registration, Registrant must file a Declaration of Continued Use (or Excusable Non-use) and Application for Renewal to prevent the registration from expiring. To keep the trademark in force after 10 years, Applicant must file a Declaration of Continued Use (or Excusable Non-use) and an Application for Renewal between each 9^th and 10^th year after the end of the first 10 years, and the trademark can be renewed indefinitely in such way. There is a six-months grace period for filing the documents listed above, with payment of an additional fee.

United States Trademark Registration Key Features

Use-based System

The United States follows a "use-based" system, which means that trademark rights are acquired through actual commercial use of the mark. It is not necessary to register a trademark to claim rights, but registration provides additional benefits and protections. Therefore, maintaining proper records of the mark's use in commerce is crucial to establish and protect trademark rights in the United States.

No Series Marks

In the system of the United States, it is not permissible to register series marks. Instead, each variation of the mark must be submitted as a separate application. This means that for each individual mark, an application fee will be incurred, resulting in an increased overall cost.

Multiple Trademark Classes

Similar to many other jurisdictions, the United States follows the Nice Classification System, which categorizes goods and services into 45 different classes. Applicants can file a single application to protect their mark across multiple classes of goods or services, simplifying the process and potentially reducing costs. However, separate filing fees apply for each class included in the application.

Intent-to-Use Applications

While use in commerce is generally required for trademark registration, the USPTO allows applicants to file "intent-to-use" applications. This option allows businesses to secure a filing date for their mark before actual use in commerce, providing a degree of certainty and protection during the development and launch stages of a product or service. Having said that, the mark will be eligible for registration only after it has been actually used in commerce and the specimen of use has been submitted for review and accepted.

Trademark Specimens

As part of the process of application filed on the use-in-commerce basis or intent-to-use basis, applicants must submit specimens demonstrating the actual use of the mark in commerce. These specimens can include labels, packaging, product tags, advertising materials or screenshots of online store that show the mark used in connection with the goods or services.

Incontestability

After 5 years of continuous and substantially exclusive use of a registered mark, the owner may file for "incontestability" status. Incontestable marks receive additonal legal protection and are more challenging to contest or invalidate based on certain grounds.

Trademark registration in the United States offers valuable protection and benefits for businesses looking to establish a strong brand presence. Understanding the registration process and key features can help applicants navigate through the system effectively and secure their trademark rights.
Please note that this article provides a general overview and it is advisable to consult with Trasomark or a qualified intellectual property attorney for specific guidance and advice regarding trademark registration in the United States.

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