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Trade mark registration in the USA
In the United States, there are two key pieces of legislation that protect the exclusive rights of trademark owners. These laws include the Lanham Act, also known as the Federal Trademark Act, passed in 1946, which governs the trademark registration process, and the Federal Trademark Dilution Act, which went into effect in 1996.
Who needs a trademark (TM) in the USA?
Registering a trademark in the US is critical for:
- Companies doing business in the US - without federal registration you will not be able to protect your brand throughout the country.
- Manufacturers of goods, especially in the technology, fashion and FMCG sectors – the US market is most susceptible to counterfeiting.
- Startups planning to attract investments - a registered TM increases the value of the company.
- Franchisors - Federal Registration Required to Develop Franchises in the US.
- Online businesses serving US customers - protected from cybersquatting and Amazon/eBay blocking.
- Authors and media personalities – registration of names and characters (e.g., Mike Myers' "Dr. Evil").
Why the trademark is a must in the USA?
- National protection - exclusive rights apply in all 50 states.
- Counterfeit prevention – Customs Recording allows you to block counterfeits at the border.
- The potential for damages is up to $2 million for a willful violation under the Lanham Act.
- Making online commerce easier – platforms like Amazon Brand Registry require USPTO registration.
- Tax advantages – TM can be amortized as an intangible asset.
- The basis for international expansion is priority when registering in other countries.
TM Registration Procedure in the USA
The process involves several steps:
Step 1: Analysis of the designation for protection, identification of identical and similar trademarks with earlier priority. This process is carried out using the official databases of the registration authority with the involvement of a national patent attorney who has access to the necessary resources.
Step 2: Select the grounds for registering a trademark in the USA from the proposed options. Then a set of documents is compiled confirming the right to register a trademark.
Step 3: Filing an application for trademark registration. This procedure must be carried out with the participation of a US national patent attorney who is certified in the field of trademark protection. The applicant himself (if he is not a US resident) or his representative do not have the right to file an application, since the law prohibits this.
Step 4: Upon acceptance of the application by the USPTO, the Examiner will perform a formal review of the application to ensure that it complies with the statutory requirements.
Step 5: Examination of the application for registration of the TM for the legality of filing and possible obstacles to registration. If a refusal is received at this stage, the applicant has the opportunity to appeal the decision within six months with the help of a national patent attorney.
Step 6: Official publication of the trademark application in the USPTO weekly newsletter. Within 30 days, anyone may file objections to the registration of the TM with the registration authority. The applicant, through his patent attorney, may respond to these objections.
Step 7: Trademark registration and obtaining a certificate. If the application was filed on the basis of the intention to use the TM in commerce in the USA, the applicant is issued a decision on registration. After confirmation of the start of use of the trademark, the registration authority issues a registration certificate.
Features of TM registration in the USA
- "Use in Commerce" system - proof of actual use required.
- Intent-to-Use – the ability to reserve a TM before use.
- USPTO Classification – 45 Classes with US-Unique Subcategories.
- Sample requirements – to confirm the use of the TM in the USA, it will be necessary to provide a sample in the form of a photo of the product, a screenshot of the site, or an application.
- Local Representative Required – Foreign applicants must have a U.S. licensed attorney.
- Maintenance of registration – must confirm use every 5-10 years.
Our services for trademark registration in the USA
Law & Trust International offers a comprehensive solution:
- Conducting a search regarding the level of individualization of a trademark in the USPTO database with preparation of an analysis of the possibility of registering a TM in its current format.
- Strategy development – choice between 1A (use) and 1B (Intent-to-Use), assistance with international registration in the future.
- Application preparation – including professional use samples.
- Application monitoring.
Additional services:
- Responses to Office Actions – 92% successful overcoming of expert objections.
- Customs entry – entry into the CBP database to block counterfeit goods.
- Monitoring violations - Watch Service program with annual reports.
F.A.Q.
How is the "genericide doctrine" affecting well-known brands in the US, and what are the subtle signs that it could be happening?
Risks arise when the name begins to be used as a verb (example: "to google"). The brand dominates the market (over 75% share). There is no clear designation of the trademark (™ or ®) in the media and advertising.
Is it possible to register a trademark in the US that contains the name of a famous character but is not protected by copyright?
Yes, but with restrictions - the character must be significantly changed. It is necessary to prove "secondary meaning". It is especially difficult with folklore and mythological characters. The best strategy is a combined TM (name + unique logo).
How are "umbrella" marks registered in the USA, and what are the pitfalls?
USPTO requires a clear separation of the "umbrella" brand and product lines. All sub-brands must be indicated in the description. The main risk is recognition of the TM as "descriptive" for some goods. It is recommended to register the main TM in class 35 (advertising services).
