TRADEMARK REGISTRATION IN THE US

The most effective way to make business functioning in the United States of America effective and successful is to trademark a company name. Then business will be protected from encroachment by unfair competitors and other outsiders. There are many reasons to register a trademark in the US.  In particular, you may ban other market players from using similar (or even the same) trademark name and reliably protect the business’s domain name.

In the USA, a trademark can be registered before the United States Patent and Trademark Office (USPTO), the agency granting US patents and registering trademarks. Considering the fact that this institution is federal, it gives a great benefit to be protected across all 50 states, as well as American Virgin Islands, American Samoa, Guam and Puerto Rico. However, it should be remembered that if you mainly want to work with Puerto Rico’s market it is better to file a local application form for full protection of a trademark’s rights right there.

APPLICATION FOR TRADEMARK REGISTRATION.

Any interested person that has a trademark in commercial use in the USA may apply for trademark registration. To improve the accuracy of submissions to the USPTO the US government decided to apply the rule, effective as of August 3, 2019, which prescribes an obligation for foreign domiciled applicants and registrants to have a US licensed attorney to apply for a trademark in the US . Despite that fact, trademark registration online is a quite convenient and time-saving method to register it.

It is good to note that either a natural and legal person can trademark name and logo. Usually, if there is not a strong confidence in durability of the legal entity and the primary aim is not to increase a capitalisation of the company by brand registration, then it is more logical to apply for a trademark on behalf of a natural person.

USPTO prescribes two types of application for trademark registration for different cases:

1. Intent to use.
2. Use in commerce.

Intent to use.

Intent to use application is applicable in the situation when you do not use it in commerce yet but have a good faith intention to use it later. In particular, you may, for example, show market research it has been made previously, attempts to find contractors or other analogues proofs of intent to use the trademark. The lack of sufficient evidence to show a bona fide intent to use a trademark may lead to the challenge of application validity.

NB! Even though it is not required to show the use in commerce while the form is applying, it is obligatory to provide such information at later stages of the US trademark registration, by filling documents or paying additional fees. Because, as it is stated in the Trademark Act, in a trademark or service mark application based on “intent-to-use” the applicant typically begins use in commerce after the filing date.

There are three time frames during which use in commerce can be claimed via Amendment to Allege Use or a Statement of Use form with supplied specimen for each good and services class before the trademark will be registered:

1. Before the application is approved for publication.
2. Within 6 months after Notice of Allowance is issued.
3. Within the granted extension of time after Notice of Allowance is issued.

The failure to provide it may lead to the cancellation of the registration process.

Use in commerce.

Use in commerce application is applicable in the situation when it is already used in the market. When it was decided to choose this variant, the applicant has to demonstrate that the company’s name and logo is in fact being used in conjunction with the sale of a good/service and these goods or services are sold under this trademark.

INTERNATIONAL CLASSES.

While filling in the form, no less crucial is to choose the right international classes for the goods or services. There are 45 International Trademark Classes based on the Nice Classification used by the USPTO. Each of them is responsible for a specific activity. For example, legal services have to be registered under the 45th international class, and SaaS platforms under the 42th international class. These two classes are easily distinguishable with each other. However, there are plenty of cases where they are sufficiently related. Hence, it is possible to choose the wrong ones. As a consequence, an examining attorney might cancel the application without any refund.

Why else is it necessary to accurately select the right class to describe goods/services? The thing is that it is a key factor in providing the possibility of coexisting with a substantially similar trademark. In particular, if there is a dispute between two alike trademarks the ‘Likelihood of Confusion Test’ will be used by courts to determine infringement. By applying this test, a court has to assess the relatedness of the products or service, and this strictly directs to the international classes of trademarks in a dispute, which might be called a red line. If classes are different, then there is a high probability that the court will not verdict infringement of intellectual property rights.

EXAMINATION OF APPLICATION FORM.

If all minimum filing requirements are met, the application is assigned with an examining attorney as well as with a serial number through which trademark status and documents retrieval data can be easily found at such TSDR platform. The latter checks the form for compliance with IP law and any other applicable rules for brand register. If there are any problems, the examining attorney issues Office Action. This is an official office letter which explains the issues set out in the application.

1. Absence of definite identification of goods/services (description is too broad, unclear etc.).
2. Specimen refusal (a sample attached which shows how applicant uses a trademark at stake).
3. Likelihood of confusion with other trademarks (when the examining attorney finds similar trademarks in a trademark search) etc.

All issues have to be resolved and Office Action has to be responded within 6 months (or shorter period) from the mailing date, otherwise, USPTO will not trademark a name. There is a possibility to revise an abandoned trademark because of an unintentionally missed deadline within two months after the issue date or actual knowledge of the abandonment. Office action can be answered via the electronic system. Wise to remember that an applicant might receive more than one Office Action, then it has to be filled along with the appropriate fee.

PUBLICATION AND OPPOSITION.

When all of the issues raised by the examining attorney have been overcome, USPTO publishes the mark in a weekly Official Gazette publication. The applicant receives a notice about such publication. That is a key stage in the trademark registration process as any party having real or legitimate interest in the process may file an opposition against it within 30 days from the publication date. Such a person should provide the examining attorney with proof that his or her registered logo might be damaged due to the applicant’s registration.

There are plenty of reasons why people may file the opposition against the registration. The most likely to occur tend to be the next ones:

Obviously, there might be more different reasons to apply for the opposition. It should be considered that any reason the opposer is going to express shall show a possible damage in some way.

If use in commerce application has been initially filed, and no opposition has been raised (or all of them have been resolved) then USPTO registers trademark about 6-8 months after the expiration of the opposition period.

However, if intent to use application form has been filled, consequently, USPTO issues Notice of Allowance. After that the applicant has to provide a Statement of Use or ask to extend the time for filing a Statement of Use (special form which shows proofs on use of a mark in commerce). If everything is okay, then Certificate of Registration is given to the applicant. From that moment the trademark is officially considered to be registered, and the registered trademark logo can officially stay with the trademark. If no, then USPTO issues the Office Action. Only when all mentioned problems have been resolved, your brand name will be officially trademarked in the US.

MAINTENANCE.

It should always be remembered that for keeping the trademark in force it is necessary to file special maintenance documents from time to time, otherwise the USPTO may cancel the US registered trademark without a right to reinstate.

• The first obligatory maintenance document (Declaration of Use and/or Excusable Nonuse of a Mark) has to be filled between 5th and 6th years period after the registration date.
• The second obligatory maintenance document (Combined Declaration of Use and/or Excusable Nonuse) has to be filled between 9th and 10th years after the registration date.
• Then every 10 years such documents have to be filled (Application for Renewal).

For sure the applicant, as the owner of the trademark may cancel it or part of food/services at any time without any fee.

COSTS TO TRADEMARK NAME AND LOGO.

When it has finally been decided to fill a US trademark application, it is equally important to count on fees which might apply during that process. Here are obligatory and additional application fees going through brand registration.

It is important to note that cost to apply either use in commerce or intent to use the initial application form is determined by the number of classes included in that form.

By concluding all stated above, trademark registration in the US may take 1-1,5 years if use in commerce form has been used or 2-2,5 years  if intent to use form has been chosen.

But its benefits are worth taking this time and costs to register a trademark. If you need any assistance with the trademarking process, use the form below to contact professionals.