Trademark registration in the USA

The American market is extremely contentious, and defending yourself or positioning yourself there requires protecting your brand, at the risk of being confronted with legal actions brought by “trademark trolls”.

These people or companies, quite common in the United States, register trademarks without the intention of using them and then use them as leverage against companies whose trademarks have been stolen by these "trademark trolls". Their goal is to make financial valuation by assigning the concession of the license at staggering prices or by claiming colossal interest in exchange for an assignment of license, under penalty of legal action for infringement.

Trademark registration in the USA must be based on a good faith intention to use the mark in interstate commerce.

How do I register a trademark in the US

Trademark registration in the United States can be done with the United States Trademark Office

The option, convenient for a foreign applicant, is to file his trademark directly in the USA with the American Trademark Office, the USPTO, which however requires the intervention of a lawyer admitted to an American office, familiar with the legislation of the country and its federal functioning, and responsible for representing the applicant before the Office.

Indeed, in terms of intellectual property, jurisdiction is federal in the USA which allows, when filing the trademark at the USPTO, that protection is granted throughout the territory to the trademark owner. 3 to 6 months are necessary before an Office examiner is seized of the file, for which we advise you not to wait to be on site to carry out the steps since the USPTO will have the protection act on the mark. retroactive to the day of the request.

Two methods for a trademark registration in the USA

Thus, the depositor can make his deposit according to two methods:

1. An application based on a foreign filing

   This approach implies that the trademark has already been registered in another country. It is therefore strongly recommended to carry out a prior art search on the main register or via a "common law search" (which targets federal applications and registrations and state registrations, but also unregistered uses of trademarks and trade names), in order to avoid any action for infringement.

   Registration is carried out in the Main Register directly with the USPTO, either based on a pre-existing trademark already registered or in the process of being registered (filing less than 6 months old) abroad. In this case, the filing date in the US will be the same as that of the office that first registered the mark.

2. A new filing without precedence

   Otherwise, the filing may relate to a mark that has not been registered with another office, whether the mark has already begun to be used by a service in the US or not.

If the brand is not yet exploited in the USA

When the mark is not yet in use on American soil, it is a filing with Intent to Use, where the depositor undertakes to begin to exploit the mark effectively in the later in the 6 months following its deposit, because the final registration is only carried out if proof is provided of the effective use.

The term of protection is granted to the holder for 10 years on a renewable basis, provided that within 6 months following the Notice of Allowance from the USPTO, the applicant has actually used the mark, or he has not made use of it for legitimate reasons, that he has requested an extension of the period for an additional 6 months, renewable within the limit of 3 years.

If the brand is already operated in the USA

Faster, when the trademark is already used in the USA, it can be filed with the USPTO with the mention Use in Commerce (used in commerce), when its use in American commerce is real and prior to the application, providing proof of use.

The term of protection is also 10 years, with the possibility of renewal. However, in the interval of this 10-year period, the owner is required to sign a "declaration of continued use", between the fifth and sixth year of use, to confirm that the mark has remained in use for the products or services covered by the registration, and supported by common use of the mark.

If it is demonstrated that the mark has been used uninterruptedly for more than 5 years, then it benefits from a presumption of validity, preventing any claim of property rights over it.

At the end of the term of the protection granted to the mark, i.e. every 10 years, a “declaration of continued use” is also required.

Here is a “cheat sheet” to help in selecting a mark.

How to register logo trademark in the USA?

The USPTO can authorize the registration of the mark but several conditions must be met. The mark must be distinctive, it must not be descriptive of the products and services that will be marketed.

Section 15 of Lanham, 15 USC § 1065 permits the registration of a trademark and the filing of a statement. The criteria are use for at least five consecutive years from the date of continuous trademark registration and current use in commerce.

Trademark registration process in USA

The owner of the mark must provide proof of its use on the day of deposit. It remains in practice difficult to report. The proof can be constituted by the sale of products to the public with the name of the mark, of its advertising use.

The brand name must be written on the packaging or the products or the brand must be connected to the products. Additionally, the products must be sold in at least two US states.

Registration will be granted but at the end of the opposition period, which will last thirty days from the publication of the filing. All interested persons will be able to assert their right, but they must provide proof of an infringement of intellectual property rights.

You can also verify the brand availability. To check it, you can go to the Trademark Register - TESS (Trademark Electronic Search System). This is a database of every US trademark applied for or registered. You will be able to find brands with common elements or a specific brand.

How long does it take for a trademark to be approved in the US?

The amount of time it takes to register a trademark is impacted by a variety of factors. А trademark can be rejected for a number of legal reasons. The procedure typically takes 12 to 18 months.

What documents are required for trademark registration in USA?

The list of documents are as follows:

• Name, address, and signature of the applicant along with the entity type
• The type of goods and services under which the brand is being registered
• The basis of filing
• The drawing or a digital image of the logo/trademark that has to be registered
• Description and details of the trademark
• Fees

Trademark registration in the US: timeline

The validity period of a trademark in the United States is ten years from the date of registration of the deposit. The trademark can then be renewed indefinitely for periods of 10 years.

After five years of use, the mark may be registered on the main register if it is descriptive. It will acquire its own identity with a distinctive character.

Trademark registration in the US also can be done online. Electronic filing is mandatory for trademark submissions, to file applications one must use the Trademark Electronic Application System (TEAS).

You will need to provide and maintain an accurate home and email address. To ensure that your trademark can be registered in the United States, you can request a quote from CGV-Expert, a specialized lawyer will be able to advise you.

Trademark registration in the US: renewal

The request for renewal may be made during the twelve months preceding the expiry date of the trademark as well as during the grace period of six months following it, subject to the payment of additional fees.

Trademark registration in USA: price

Search rates 1st class $100.00 – Each additional class $80.00
Price listed is for one word mark. If the mark includes figurative elements (logo), a surcharge of USD 30 per class will apply.
Price for 1st class filing applications $650.00 - Each additional class $590.00
When filing a trademark in the United States, one must choose a basis for the application. Depending on the base chosen, supplements may be charged. Consult our Advisor for more information.

Conclusion

When a European company plans to enter the American market, it must be aware of the need to use or have a “serious intention” to use its trademark in that territory even before filing an application. Indeed, unlike the French and European systems, the American trademark system is based on the creation of use rights rather than the registration of creation rights: first to use, not first to register.

In the United States, the right to a mark is not conclusively granted by the US Patent and Trademark Office (USPTO) until evidence of current use in business and territory is provided. or, in the case of an international filing, without the applicant confirming that he has a “good faith intention” to use as a mark the sign for which he is seeking protection. This attestation has the meaning of an oath and must be taken very seriously by the contributor.

Trademark registration does not make it possible to have a presumption of ownership of rights unlike the owners whose mark is registered on the main register. This registration is limited to marks that are used in the United States or its territories and those based on a foreign registration issued in the applicant's home country.

The additional register offers important advantages: the mark will appear in trademark searches and the applicant will be able to use the symbol ® and other registration indicia in connection with the mark. Further, the registration number of an additional registration is consecutive to marks on the main register, so the particular register cannot be determined from the registration number alone.