Trademark Registration

How to register a Trademark in USA?

A Trademark is a brand name, logo, phrase, or a word used by an individual or company to identify its goods and services from others. Trademarks are protected by Intellectual property rights. Registration of Trademark in USA (United States of America) and its administration at the federal level is ruled by the US Patent and Trademark Office (USPTO).

Apart from this, all states operate their native trademark registration for the working companies in a restricted location. The federal registration uses a separate form of registration options to bring in protection for different needs and situations. In this article, we shall have an insight of registering a trademark in USA.

What can be trademarked?

Registration of a trademark can be sought for-

• A word or combination of words that is not descriptive in nature of the character or the quality of goods or services;
• A name of a person;
• Letters or numerals or combination of the two;
• Image like symbols, drawings, three-dimensional features like shape and packaging of the goods; and
• Non-visible signs such as sounds etc.

Who can apply for a Trademark?

Any individual or business who is an owner of the trademark can apply for a trademark.

The owner who can apply could be any of the following:

• Corporation;
• Limited Liability Company;
• Partnership;
• Joint venture; and
• Trust.

Process of applying for Trademark in USA

All the intellectual properties like a trademark, patent, copyright, etc differ in their registration process therefore you must identify if the trademark is appropriate for you. You must also know the difference between all of them before getting a move on.

 Once you decide that trademark protection is what you need then you can use the following steps to register your trademark in USA-

Select a mark

In the registration process, the first step is to select a mark. It must be done with due diligence and care, as every mark cannot be registered as Trademark in USA with its Patent and Trademark Office (USPTO) and every mark cannot be legally protected which means that some marks might not be capable of serving as the basis for a legal claim by the owner who intends to stop others from using a similar mark.

• Individuals and businesses who are new to trademarks and their registration process sometimes choose a mark that may not be possible to register and or protect due to various reasons. Therefore one must always consider these before applying for a trademark protection-
  • Is the mark that I wish to register is registrable;
  • How difficult would it be to protect the mark based on the strength of the selected mark?

• While selecting a mark for trademark protection you must identify your mark format that means whether it is a standard character mark, a design mark, or a sound mark. Then identify the precise goods and/or services to which the mark will apply.
• One must always search the USPTO database to know whether someone is claiming trademark rights in wording or design which is similar and is used on goods or services.

Preparing and submitting the application

The application can be filled online through the Trademark Electronic Application System and pay the prescribed application fee (processing fee). You will be required to monitor the entire application process and the progress of your application can be monitored through the Trademark Status and Document Retrieval system. It is advisable to check the status of the application at least every six months from the date of the initial filing of the application for the registration of a trademark in USA otherwise it may result in you missing the filing deadline. 

Review of the application by the USPTO

Once the USPTO^[1] is satisfied that the application for registration fulfills the filing requirements, a serial number shall be assigned and the application is forwarded to the attorney who examines it. The examining attorney shall consider the application and check whether it complies with the rules, statues including the required fee.

If the attorney is of the opinion that the mark should not be registered then he will issue a letter explaining the grounds for refusal and the deficiency in the application. Such a letter should be responded timely by the applicant within six months of such an issue lest your application is abandoned.

Approval or denial of registration

If the attorney who examines your application does not raise any objection to the registration then such attorney shall approve the mark to be published in the Official Gazette. The USPTO shall send you a notice informing you about the date of publication. Once the mark is published there, anyone who is of the opinion that the mark, if registered, shall violate his right, can file an opposition 30 days from the date of publication.

In case no opposition is filed or if the filed opposition fails, the application moves on to the next step where it is registered by the USPTO.

Maintain your registration

It is highly advised to maintain your registration lest you lose it. It implies that you must file certain maintenance documents. You can keep your registration alive by renewing it after 10 years of registration.

What forms of trademarks are not registered?

Generally, the trademarks having descriptive or generic nature are considered weakest and they may be rejected or may face a lot of obstacles in getting registered which may cause loss of time and money. Generic and descriptive means those trademarks that describe the products and/or services offered by the company.

Advantages of Registering a Trademark in USA

There are several advantages of registering your trademark when it comes to registering a trademark in USA.

These advantages are enumerated below.

• It prevents others from using deceptively similar or identical marks as one cannot register a mark that is identical or similar to an already registered trademark.
• Registration gives nationwide notice of the ownership of the mark.
• It serves as evidence of the possession of the mark by a person which can be beneficial in court matters.
• It allows the owner of the trademark to use ® symbol when the mark is applied for the goods and services provided in the registration thereby sending a strong message to others that you care about preserving your rights.
• It gives the right to initiate legal proceedings in the court and get damages in some cases.
• In case of counterfeiting, it entitles you to seek statutory damages.
• Registering your trademark in USA allows protection of your trademarks worldwide by providing a basis for foreign registration.
• Once the registration is recorded individually with customs, it empowers the United States of America Customs and Border Protection to block such imports that violate the mark or are deceptively similar.
• A registered mark also determines the proof of legality and exclusive ownership of the trademark for products and services recorded in the registration.
• Once you use the registered trademark for five consecutive years you shall have the right to file your mark considered incontestable. What it means is it will discourage other businesses to raise a challenge to your trademark.

Documents required for registering the Trademark in USA

The list of documents needed for registration of the trademark in USA is as mentioned below.

• Application form for registration;
• Applicant’s identity proof and address proof copies;
• Business or company certificate copy;
• Letter of power of attorney;
• Proposed trademark’s print and digital version; and
• Applicant’s passport copy.

Validity period and Renewal of registration of Trademark in USA

A registered Trademark is lawfully protected for ten years in USA from the date of its registration. If the owner of the trademark intends to seek additional growth and wants to continue with the trademark then he may renew the trademark registration after paying the prescribed fee of renewal.

In case the owner doesn’t renew the registration before the date of expiry still there is an opportunity of renewing it as there will be a grace period of six months. It may be noted that a trademark registration may be canceled in case such a trademark is not used for a consecutive five years period in USA from the date of registration of the trademark in USA. 

A renewal is valid for another 10 years and for such renewal the fee can be paid in the last year of the period of registration.

Who owns the trademark in USA?

Unlike some other countries, in the United States if you are the first user of the mark then you are also considered its user even if such mark has been applied for registration by someone else first; provided the application was based on a bona fide intention to use the mark and was filed before your use or provided the application has the priority of a foreign country of origin application filed during last six months and before your use.

The owner of the trademark has the authority to license the trademark to be used by someone but the owner is required to control the nature and quality of the licensee’s goods or services under the mark. The owner may also assign the mark to another party provided such assignment includes the goodwill of the business and any existing registrations or pending applications.

Can Trademark rights obtained from registration be lost?

 The rights arising from trademark registration can be lost in case of abandonment, improper licensing or assignment. A trademark is said to be abandoned when it is no more in use and such discontinuation in use is with the intent of not using it. The general idea is that the trademark law protects such marks that are in use.

Where the use of a trademark is licensed without any proper control or supervision from trademark owner such trademark shall be canceled thereby causing loss of trademark rights.

Law of Trademark in USA

The laws of the United States have protected trademarks by state common law from colonial times. In 1870 a federal trademark regime was created. The Lanham Act^[2] provided for US Patent and Trademark Office (USPTO) which is the regulatory authority for trademark registration in USA. Trademarks in USA are administered by the federal as well as state law. State law primarily provides for the principal supply of trademarks protection but now it covered by the federal law.

In order to get the best protection for a mark, it may be registered. A registered trademark in the US is marked with “®” symbol whereas unregistered is marked with “TM”. Trademark rights can be wasted due to improper licensing, reckless assignment, or abandonment. The trademark may be canceled in case where the use of a trademark is licensed without proper control by its actual owner. It is crucial that the trademark rights are protected by lawfully using the mark.

The amount of time taken to register a trademark varies from nation to nation and it may depend upon several factors as well. The USPTO has been consistent with the time required for registration of the trademark. Trademark in USA has been consistently registered in under 12 month’s time. Despite such efficiency from the USPTO and the desirability of getting a federal registration, the volume of issuance of first office actions is high as the USPTO issued the highest number of preliminary refusals to International applicants using the Madrid system.

Conclusion

Trademark registration is one significant process of safeguarding your Intellectual property. It is vital that you stay cautious that no one infringes or abuses your trademark so once the Trademark in USA is registered with USPTO you should take care that if a trademark pops up that is deceptively similar to yours then be quick taking the necessary actions.

Our Recommendation: International Trademark Registration: A Route to Global Branding