News: Registration of Trademark in USA

Trademark Registration in the USA

Operating or managing a brand in the USA requires trademark protection. Trademark registration in the US is important, when it comes to protecting your brand’s name, design or slogan from being used by third parties in the same country. The Authorized trademark registration office in the USA is the United States Patent and trademark Office (USPTO). Those who reside outside the US, find the registration process inconvenient and difficult. Trademark registration in the United States requires the applicant to take certain directed steps for the application to be approved. Law and Trust International lawyers works with you to ensure that the application is on the right way.

What is the difference between a trademark registration in the United States and other jurisdictions?

Trademark registration in the United States differs from other jurisdictions in the following features:

1. Certificate validity. In the US, the period of validity begins from the date when TM is registered. In other jurisdictions, this period begins on the date when the application is submitted to the relevant authority.
2. There are several requirements for the trademark to be registered. Specifically, the applicant shall rely on one of the following basises when submitting documents:
   • Use in commerce - if at the time when the application is submitted the name being registered is already used by the owner in the territory of the country.
   • Intent to Use - if the applicant intends to use the trademark after its registration.
   • According to the procedure of the Paris Convention for the Protection of Industrial Property - if a foreign application has already been filed, but no later than 6 months from the date when the documents were filed in one of the states parties to the Convention.
   • Foreign registration - on the basis of a trademark already registered in a foreign country.
   • International registration under the Madrid Agreement procedure.

The US legislation refuses to register trademarks if they are mislead, are similar to or resemble to other TMs. Therefore, a preliminary search is a relevant service to lower potential risks of application’s refusal. Such a search should be carried out both in the American Trademark Electronic Search System (TESS) and in the WIPO international database.
It is necessary to pay attention to the classes of the International Classification of Goods and Services (ICGS). If something similar already exists within the class in which you are going to use the designation, registration of such a sign may be rejected. However, registration of a similar designation in another class will likely not be a reason for refusal. Thus, the use of an apple image by the Nina Ricci brand to designate perfumery products in class 3 (perfumery products) will not violate the rights of Apple Inc. trademark. in class 9 (information processing equipment and computers, software). Also, when specifying a general description of goods and services, the agency may require a more specific list. For example, specifying ‘Printed materials’ for goods of the 16th class, be prepared to indicate a list of specific goods that you are going to produce (magazines, calendars, newspapers, etc.).

If all of the abovementioned conditions are met, the Office will conduct an examination of the application. If the examination is successful, the trademark information is published in the USPTO Official Gazette.

THE UNITED STATES TRADEMARK REGISTRATION FAQS

• How to register a trademark in the United States?

The registration process begins with a free consultation and expert assessment of the emblem/logo/TM from our lawyers, ensuring it complies with the requirements of this jurisdiction. After that, our specialists collect and prepare the necessary documents (including statement of use) and submit the application for trademark registration. At the end of the registration procedure, the certificate of registration may be delivered to you via courier service.

Trademark registration in the US involves ‘Filing Basis’. There are four different options available to start the registration process. They include:

• Application option ‘Use in Commerce’  

This application format applies to those making use of a trademark in the US. The requirements for filing of these include ‘date of first use’ and proof validating the trademark used in the US is yours. The proofs that are accepted include website page, advertisement, labels, tags or packages, business’ brochure, flier or leaflet identifying the trademark.

• Application option ‘Intent to Use’

‘Intent to Use’ basis applies if the trademark is not currently in use. Once the application is sent and registration is approved, a proof of use will be required and should be sent to the United States Patent and Trademark office (USPTO).

• Application option ‘Foreign Registration’

This application basis applies if the Trademarks are registered in another country, the “Foreign Registration’ is filed in this case meaning no proof of the trademark use is required for approval. The registration entails a scanned copy of the Foreign Registration Certificate and a translated copy signed by translator.

• ‘Foreign Application’ option 

Trademarks filed in other countries except the US in the past six months can be filed on the platform as “Foreign application’. Once the trademark registration is approved, there are other additional requirements but first, you need the foreign registration certificate bearing the trademark or proof of use in the United States.

Note that in all the application processes above, the proof of use must be submitted between the fifth and sixth years from the registration date approval.

• How much does it cost to register a trademark in the United States of America?

The total cost of registering a trademark in the United States of America starts from $532. The price includes the comprehensive review, registration service and registration certificate.

• What are the fees of trademark registration in the United States?

The trademark registration fees depend on several factors, they include

• Number of trademarks
• Number of classes of goods and services

• What are the types of trademark registered in the United States of America?

There are a host of trademarks that can be registered in the United states. They may include signs, slogans, emblems or designs that establish the brand’s name.

• What types of trademark can’t be registered?

Prohibited trademarks include those, opposing the American standards of moral, cause public unrest or violence, generic terms, names of states, flags of nations, international organization insignia, misleading contents, surnames, regional or county names.

• How long does it take to get a trademark registration approval in the United States?

It takes from 10 months to get a trademark registration approval.

• How many years will a trademark registration be valid in the US?

Trademark registration are generally valid for 10 years.

• When is the Renewal date for my trademark?

The renewal date is determined ten years from the registration date approval.

• Is it safe to register a trademark in the United States of America yourself?

Trademark registration is not an automatic process and requires legal review by an attorney. It is wiser and safer to take all the necessary steps to the success of your trademark registration application by consulting with legal practitioners.

Benefits of the US trademark registration with Law & Trust International

• Free consultation services.
• No hidden fees for our services, all prices are stated out within the framework of specific tasks.
• Experienced and qualified attorneys on deck.
• Worldwide trademark registration services.
• Data protection (Confidentiality and legality).