TRADEMARK REGISTRATION IN THE USA

The American market is extremely contentious, and defending yourself or positioning yourself there requires protecting your brand, at the risk of being confronted with legal actions brought by “trademark trolls”.



These people or companies, quite common in the United States, register trademarks without the intention of using them and then use them as leverage against companies whose trademarks have been stolen by these "trademark trolls". They want to achieve financial valuation by either granting the concession at astronomical prices or claiming huge interest in return for the assignment of the license, under penalty of legal action for infringement.

Trademark registrations in the USA must be based upon a good faith intent to use the mark for interstate commerce.

How do I register a trademark in the US

Trademark registration in the United States can be done with the United States Trademark Office

A foreign applicant has the option of filing his trademark directly in the USA at the American Trademark Office (the USPTO). However, this requires the intervention a licensed American lawyer, familiar with the legislation of the country and its federal functioning, and responsible for representing the applicant before the Office.

In fact, the USA has federal jurisdiction in intellectual property matters. This allows the trademark owner to file a trademark at the USPTO and protection is granted across the entire territory. It takes between 3 and 6 months before an Office examiner can seize the file. We advise that you do not wait to be present to complete the steps as the USPTO will have the protection acts on the mark. Retroactive to the date of the request.

Two methods for a trademark registration in the USA

Thus, the depositor can make his deposit according to two methods:

  1. An application based on a foreign filing
    This implies that the trademark is already registered in another country. This is why it is strongly recommended that you conduct a prior art search using the main register or a "common-law search" (which targets federal applications and registrations and state registrations, but also unregistered uses of trademarks and trade names), in order to avoid any action for infringement.Registration is carried out in the Main Register directly with the USPTO, either based on a pre-existing trademark already registered or in the process of being registered (filing less than 6 months old) abroad. In this case, the filing date in the US will be the same as that of the office that first registered the mark.

  2. A new filing without precedence
    The filing could also be related to a mark not yet registered with another office. This is regardless of whether the mark has been used by a US service or not.

If the brand is not yet exploited in the USA

If the mark is not in use on American soil yet, it is a filing titled Intent to Use. This is where the depositor agrees to start to exploit the mark in an effective manner within the six months following its deposit. The final registration can only be made if there is proof of the actual use.

The term of protection granted to the holder is for 10 years, renewable on a regular basis. However, the applicant must have used the mark within 6 months of receiving the Notice of Allowance (USPTO) and he has asked for an extension for 6 months. This can be renewable within the 3 year limit.

If the brand is already operated in the USA

Faster, when the trademark is already used in the USA, it can be filed with the USPTO with the mention Use in Commerce (used in commerce), when its use in American commerce is real and prior to the application, providing proof of use.

The term of protection is also 10 years, with the possibility of renewal. However, in the interval of this 10-year period, the owner is required to sign a "declaration of continued use", between the fifth and sixth year of use, to confirm that the mark has remained in use for the products or services covered by the registration, and supported by common use of the mark.

If it is demonstrated that the mark has been used uninterruptedly for more than 5 years, then it benefits from a presumption of validity, preventing any claim of property rights over it.

At the end of the term of the protection granted to the mark, i.e. every 10 years, a “declaration of continued use” is also required.

How to register logo trademark in the USA?

The USPTO can authorize the registration of the mark but several conditions must be met. The mark must be distinctive, it must not be descriptive of the products and services that will be marketed.

Section 15 of Lanham, 15 USC § 1065 permits the registration of a trademark and the filing of a statement. The criteria are use for at least five consecutive years from the date of continuous trademark registration and current use in commerce.

Trademark registration process in USA

The owner of the mark must provide proof of its use on the day of deposit. It remains in practice difficult to report. The proof can be constituted by the sale of products to the public with the name of the mark, of its advertising use.

The brand name must be written on the packaging or the products or the brand must be connected to the products. Additionally, the products must be sold in at least two US states.

Registration will be granted but at the end of the opposition period, which will last thirty days from the publication of the filing. All interested persons will be able to assert their right, but they must provide proof of an infringement of intellectual property rights.

You can also verify the brand availability. To check it, you can go to the Trademark Register - TESS (Trademark Electronic Search System). This is a database of every US trademark applied for or registered. You will be able to find brands with common elements or a specific brand.

How long does it take for a trademark to be approved in the US?

The amount of time it takes to register a trademark is impacted by a variety of factors. А trademark can be rejected for a number of legal reasons. The procedure typically takes 12 to 18 months.

What documents are required for trademark registration in USA?

The list of documents are as follows:

  • Name, address, and signature of the applicant along with the entity type

  • The type of goods and services under which the brand is being registered

  • The basis of filing

  • The drawing or a digital image of the logo/trademark that has to be registered

  • Description and details of the trademark

  • Fees

Trademark registration in the US: timeline

The validity period of a trademark in the United States is ten years from the date of registration of the deposit. The trademark can then be renewed indefinitely for periods of 10 years.

After five years of use, the mark may be registered on the main register if it is descriptive. It will acquire its own identity with a distinctive character.

Trademark registration in the US also can be done online. Electronic filing is mandatory for trademark submissions, to file applications one must use the Trademark Electronic Application System (TEAS).

You will need to provide and maintain an accurate home and email address. To ensure that your trademark can be registered in the United States, you can request a quote from CGV-Expert, a specialized lawyer will be able to advise you.

Trademark registration in the US: renewal

The request for renewal may be made during the twelve months preceding the expiry date of the trademark as well as during the grace period of six months following it, subject to the payment of additional fees.

Trademark registration in USA: price

Search rates 1st class $100.00 – Each additional class $80.00

Price listed is for one word mark. If the mark includes figurative elements (logo), a surcharge of USD 30 per class will apply.

Price for 1st class filing applications $650.00 - Each additional class $590.00

When filing a trademark in the United States, one must choose a basis for the application. Depending on the base chosen, supplements may be charged. Consult our Advisor for more information.

Conclusion

When a European company plans to enter the American market, it must be aware of the need to use or have a “serious intention” to use its trademark in that territory even before filing an application. Indeed, unlike the French and European systems, the American trademark system is based on the creation of use rights rather than the registration of creation rights: first to use, not first to register.

In the United States, the right to a mark is not conclusively granted by the US Patent and Trademark Office (USPTO) until evidence of current use in business and territory is provided. or, in the case of an international filing, without the applicant confirming that he has a “good faith intention” to use as a mark the sign for which he is seeking protection. This attestation has the meaning of an oath and must be taken very seriously by the contributor.

Trademark registration does not make it possible to have a presumption of ownership of rights unlike the owners whose mark is registered on the main register. This registration is limited to marks that are used in the United States or its territories and those based on a foreign registration issued in the applicant's home country.

The additional register offers important advantages: the mark will appear in trademark searches and the applicant will be able to use the symbol ® and other registration indicia in connection with the mark. Further, the registration number of an additional registration is consecutive to marks on the main register, so the particular register cannot be determined from the registration number alone.


Location: India

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