Trademark Registration in USA: An overview

The trademark legislation of USA takes a very broad perspective of what kind of marks can be trademarked in USA. The definition of a trademark in the USA states that any word, symbol, name or device that distinguishes services and/or goods of one source from those of another can be registered as a trademark.

Most of the trademarks in the USA are registered as word marks or logos. There is also room for the registration of non-traditional marks which can be registered if they are found to be non-functional and if they have acquired distinctiveness.

The legislation governing the regulation of trademarks in USA is the Lanham Act of 1946 which is also known as the U.S. Trademark Act, 15 U.S.C. § 1127 et seq. Trademarks in the USA are also governed by State laws and Common law.  

Authority for trademark registration in USA

The competent statutory authority for the purpose of registration of trademarks in the USA is the United States Patent and Trademark Office (USPTO).

Marks that CANNOT be trademarked in the USA

A mark or sign cannot be trademarked in the USA if:

Without exception, the following marks are statutorily barred from getting registered as per the Lanham Act:

1. A name, signature or portrait that identifies a particular living individual without obtaining their prior consent;
2. Any flag, coat-of-arms, or other insignia of a foreign nation or any government agency;
3. A mark which resembles an already registered mark or a mark that has been used previously in the USA by another person and not abandoned the mark, when used on or in connection with services and/or goods of the applicant, is likely to cause confusion or cause mistake or deceive;
4. Generic, merely descriptive or deceptively misdescriptive terms;
5. Geographically descriptive or misdescriptive terms;
6. Immoral or scandalous matter;
7. Matter protected by statute or convention; and
8. Functional matter

The following marks are, by law, barred from registration on the Principal Register absent acquired distinctiveness but such marks can be registered on the Supplemental Register i.e. the register of lesser protection:

1. Names that are primarily merely surnames;
2. Merely descriptive or deceptively misdescriptive; and
3. Primarily geographically descriptive

The USPTO can also refuse registration of a mark on the following:

1. Trade names;
2. Titles of artistic works; and
3. Matter which is incapable of functioning as a mark, for ex: generic names.

How are the trademarks represented in the USA?

Representation of trademarks in the USA can be done in the following ways:

• 2D designs and Word marks: representation of 2D designs and words/word marks requires submission of one clear drawing of the mark such as the design mark and the stylized marks. In case colors are claimed, the drawing must reflect the colors. If colors are not claimed, then the drawing should be in black and white.
• 3-D marks: representation of 3D marks is done by submitting the drawings of the mark, and the drawings should consist of an illustration or a photograph that shows a single rendition of the mark in 3 dimensions along with the disclaimed matter delineated in dotted lines.
• Non-visual marks: representation of non-visual marks requires detailed descriptions instead of drawings. In the case of sound marks, audio files are required to be submitted along with a clarification of the description of the mark. In the case of flavour or scent marks, a specimen containing the flavour or scent is required to be submitted.

Procedure for filing a Trademark application in the USA

Following is a straight-forward procedure for filing an application for the registration of a trademark in the USA:

1. Designing of a trade mark
2. Determining the classification of services and goods to be trademarked
3. Conducting a prior trademark search before filing the application  
4. Filing the application for the registration of a trade mark
5. Examination of the mark by the USPTO
6. Publication of the proposed mark and opportunity for opposition
7. Registration of trade mark   

• Designing of a trade mark -

The journey of trademark registration begins with designing a trademark that falls within the four corners of the definition of trademark provided by the Lanham Act. The mark should be able to distinguish its services and/or goods from those of others. While designing a mark, the applicant should be aware of the absolute and relative grounds of refusal and accordingly design the mark so that the application is not refused by the USPTO.

• Determining the classification of services and goods to be trademarked -

It must always be remembered that trademark protection is not restricted to the mark alone, but it is a protection that extends to the services and goods registered under the trademark. Therefore, it becomes quintessential to determine the classes of services and goods within which the trademark has to be registered. Once the application has been made, the applicant does not have a chance to make additions to the application with respect to the classes of services and goods. Thus, it is advised by the trademark consultants at Enterslice to add as many classes as possible before filing the application. USA follows the NICE classification where the goods fall under the classes from 1-34 and services fall in the classes from 35-45. Trademark searches can be conducted for desired classes and associated classes.

• Conducting a prior trademark search before filing the application -

Conducting a prior trademark search before filing the actual application for trademark registration is a practice that is emphasized by trademark experts because it helps the applicant to ascertain the availability of the proposed mark and helps to finds out the existence of prior similar or identical marks on the trademarks register. This helps to avoid instances of objections and opposition with respect to the mark.

A prior trademark search in the USA can be conducted for word marks, numeral, device marks and labels. An official search can be carried out in the database of the USPTO through the use of the system called the Trademark Electronic Search System or TESS. It must be remembered that this search at the TESS is only a part of the clearance search as their database may not contain all the trademarks.

It is often advised by the trademark consultants at Enterslice to conduct a comprehensive trademark clearance search in the USA in order to ascertain the availability of the proposed mark and to reduce the chances of any objections or oppositions with respect to the proposed mark later on.

Additionally, it is also emphasized that the company should also carry out a domain search of the proposed trademark in the USA. Similarly, it is advisable to conduct a comprehensive search for a figuration trademark.

• Filing the application for the registration of a trademark -

A trademark application can be filed for a single class or multiple classes at the USPTO.

The trademark application can be filed in the following two categories:

1. Ordinary Application
2. Convention Application (while claiming priority from a convention country).

Ordinary Application

The trademark applications that are filed without claiming any priority are called Ordinary Applications. An ordinary application is always filed online i.e. mandatory electronic filing. Multi-class trademark applications can be filed in the USA.

Convention Application

Trademarks Act also lays down the provisions regarding the filing of Priority Application wherein a priority of the mark can be claimed in the said mark in the Convention country as per the Madrid Convention or Paris Convention. A priority trademark can be filed in the USA where the applicant can submit the priority claim after the filing date of the US application, provided the claim of priority has been filed within a period of 6 months from the fate of foreign filing, and the claimed priority date is earlier than the filing date of the US application.

• Examination of the mark by the USPTO -

After filing the application, the USPTO assigns a serial number to the application that meets the minimum filing criteria. Thereafter, for about six to eight months, the application is examined by an examining attorney. The examining attorney examines the trademark application on both absolute and relative grounds. During the examination process, if the examining attorney comes across minor procedural or technical issues with respect to the application, the examining attorney has the option to either email or call the applicant regarding the deficiencies in the application in order to resolve the issues by Examiner’s amendment. On the other hand, if there are substantive issues with respect to the application, the examining attorney generally issues an office action in this regard with the deadline of 6 months.

• Publication of the proposed mark and opportunity for opposition -

If the examining Attorney does not find any objections in the application or the applicant overcomes all the objections, then the application is approved by the Attorney and sent for publication. Any party who feels that it will be damaged after the registration of the mark is given a period of 30 days to raise opposition, or they can ask for an extension of time to oppose.

However, if no such oppositions are raised by any 3rd party, then the applications that are based on use or home country registrations or extensions of protection under the Madrid system, are approved for registration. The registration certificates are issued to the applicant within a period of 2-3 months after publication.

In the case of an intent-to-use application, a Notice of Allowance is issued after 2 months of publication. The applicant has a time period of 6 months to file a Statement of Use. A maximum of 5 extensions are permitted here. After a period of 2-3 months, the Statement of Use is approved, and registration certificates are issued to the applicant.

• Registration of the trade mark -

The application for the registration of trademark moves towards registration where no opposition was raised or where the opposition was raised, it was overcome, and the decision was filed in favour of the applicant (in the case of claiming use basis) or when the USPTO accepted the Statement of Use (where the application was filed in proposed to be used basis). The mark is registered for a period of 10 years, calculated from the date of registration.

When the registration is granted, the USPTO itself sends the Certificate of Registration to the applicant, and the applicant can receive the certificate without payment of any additional fee. The applicant is also required to submit a declaration of use (supported by at least one specimen of use for each class) or an excusable non-use must be filed either between the 5th or 6th year of registration or within the grace period of 6 months after the expiration of the 6th year in order to keep the registration of the trademark in force for the remaining of the term in the 10 years of its overall duration.

Information to be furnished in the application for Trademark registration in USA

The minimum filing requirements and information to be provided in an application for the registration of a trademark in the USA are as follows:

• Name and address of the applicant;
• Specification whether the applicant is a natural person or juristic person (mention whether the latter is a legal entity or not);
• Citizenship of the applicant;
• A clear drawing of the mark;
• Filing fee for at least one class, and;
• Identification of goods and/or services for which trademark is sought.

Where the application made is based on use “in commerce”, the dates of first use anywhere and the in US commerce must be stated along with at least one specimen showing the current use of the mark in the US must be submitted for each class. It is the duty of the applicant to verify that the mark is in use in the USA for all the claimed services/goods as of the filing date.

Where an application is based on intent to use, an extension of protection under the Madrid system or as an extension of protection under the Madrid System, it is the duty of the applicant to verify that it has a bona fide intent to the mark in the USA for all the claimed service/goods as on the filing date.

Where the applicant wants a colour mark, the color must be specifically claimed by submitting a color drawing of the mark, a statement that colour is an essential element of the mark and a colour location statement.

In the case of non-English marks, a statement must be provided about the English translation of the words or a statement that the mark does not have any meaning in English.

Tips to avoid processing delays in trademark filing in USA

An applicant should keep the following list in mind while filing an initial application, a post-registration form or a response form in order to avoid processing delays. These steps can help you to decrease the time it takes for USPTO to review your application:

• In case you are filing TEAS Standard, you should use identifications from USPTOs assigned ID Manual because it will populate with the International Class. If you are unable to use the ID Manual, then do include the International Class. USPTO will assist you in figuring out during the examination process.
• You should respond to formal communications, such as office actions, made by the USPTO as soon as possible. This allows you more time at your disposal to address all the issues raised in the office action and other unexpected IT issues before the statutory deadline. This allows USPTO to move applications quickly through prosecution.
• You should use the dedicated fields provided in your electronic TEAS forms to fully respond to all the issues raised in the office actions. The response includes providing alternative arguments and resolutions in the given dedicated fields. While responding in response to the procedural requirements such as identification, translation and disclaimer, simply fill in the appropriate data fields with your proposed changes and provide only necessary information where required or where it is necessary to explain the changes. You should avoid including a separate explanation as an attachment unless it is necessary for further explanation as it will take more time for USPTO to review such an attachment.
• For routine and minor issues which can be resolved quickly by informal communication, you must reach out to your assigned examining attorney either via phone or email with detailed instructions regarding the changes you would want to make in the application. The Examiner attorney has the power to issue examiner’s amendments to resolve straightforward issues or to make minor changes that could make the application ready for approval for publication.

Cost for the registration of Trademarks in the USA

The prescribed cost of filing a trade mark in the USA is USD 350 per class. An applicant who wants to register a trademark in the USA should muster a budget of USD 1,500- 2,000 right from the stage of filing the application to obtaining the registration. This amount includes the statutory fee along with the professional fee.

Renewal of a trade mark in the USA

In order to renew a trademark in the USA, a declaration of use (to be supported by at least one specimen of each class), or an excusable non-use of the mark, along with a renewal application must be filed with the USPTO one year before the end of every 10 years after the date of registration or within a period of six months grace period after the expiry date of registration. The declaration submitted should include a verified statement that the trademark is in use in commerce. If the applicant fails to provide this combined declaration, the registration of the mark will be cancelled or expire.

Renewal of a trademark can be done from time to time an innumerable number of times upon consistent payment of the renewal fee. If the trademark holder fails to renew the trademark registration by payment of the renewal fee, the mark becomes liable to be removed from the Register.