Why and how to register a trademark in the United States

In the USA, federal trademarks are registered before the United States Patent and Trademark Office, most commonly referred to by its abbreviation of USPTO.

The registration process in the USA varies slightly according to the filing basis chosen, as does the time it takes, although on average for straightforward cases the timeframe would be 12 to 18 months.

What should I know before applying for a trademark in the United States?

Since the USPTO is a federal institution, a registered trademark in the USA grants protection in all 50 member states, as well as the American Virgin Islands, American Samoa, Guam and Puerto Rico. However, a registered U.S. trademark does not prevent third parties from being able to register the trademark in Puerto Rico. For this reason, if you are planning of enforcing your trademark rights in that territory, it is advisable to also file a local application there.

As the USA is a member country of the Madrid system, trademark protection in this country can also be obtained by applying for an extension of a local trademark registered in another Madrid system member country, through the World Intellectual Property Organization (WIPO). A trademark registered or filed in the USA can also be used as a basis to request its extension to other jurisdictions in the system.

The USA is a "first-to-use" jurisdictions, which means that the rights to a trademark are granted to the person or entity that first uses it in the territory of the USA. While this leads some to question whether they have to register their trademark, it is still highly advisable as it grants presumption of ownership, and is also necessary in case legal actions for trademark infringement need to be undertaken.

Registered trademarks in the USA offer protection only for the trademark exactly as filed. Therefore, if your trademark contains both words and figurative elements, it is advisable to file separate applications for the wordmark on the one hand and the logo on the other hand, in order to achieve optimal protection.

In the USA, when filing a logo application is it necessary to decide whether or not to claim the colors of the trademark. While this does not affect the costs of registration, it has an impact on the scope of protection granted by the trademark registration.

Why should I order a trademark search in the United States?

A trademark search is a report on the chances a trademark has of successfully registering. While the search is optional, it is a highly-recommended stage in the process, potentially preventing obstacles and disappointments down the road.

The search is conducted in the USPTO's trademark database and its aim is to determine whether there are previously filed or registered trademarks that could lead the examiner to issue a refusal based on likelihood of confusion or whose owners would be likely to file an opposition against your trademark application. 

The report also includes an analysis of the trademark according to USPTO's absolute criteria for approving trademark applications.

In the USA, it is possible to conduct search for logo marks (figurative search) in addition to wordmarks.

For more information, you can download an example of a search report.

What are the requirements for trademark registration in the United States?

In order to file a trademark application in the USA, in addition to the trademark name, logo, classes and owner details, it is necessary to choose a filing basis between actual use, intent to use, and foreign registration. The USPTO requires a trademark to be in use in the USA in order to register it, which is why choosing the filing basis for a US trademark is very important as it will affect the registration process.

The documentation to be provided depends on the filing basis; for "intent to use" no documentation will be required at the time of the application, while in the case of "actual use" a specimen of use must be filed along with the trademark application. If the "foreign registration" filing basis applies, a scanned copy of the registration certificate in the country of origin must be provided, along with a translation into English if the original certificate is in another language.

What is the trademark registration process in the United States?

Here is a general outline of the process for how to register a trademark in the United States:

Trademark registration process in the United States

If the "intent to use" filing basis has been chosen, then an additional step called the "declaration of use" will take place between the publication and the registration.

Once a trademark has been published, a 30-day opposition period opens in which interested third parties can file an opposition against the trademark application. During that period, they can also request an extension of time to file an opposition.

The USPTO still issues hard copy (paper) trademark certificates. However, for all intents and purposes, the digital copy has the same value as the paper one.

What happens once my trademark is registered in the United States?

Once a trademark is registered in the USA, it has a validity of 10 years counting from the registration date. However, in order to maintain the trademark's validity, a declaration of use must be filed within the 5th year of registration. If this declaration is not filed, the trademark will lapse and lose protection.

During the 9th year of registration, that is to say, within 12 months before the trademark is due to expire, it will be necessary to file another declaration of use and to request the trademark renewal. The renewal and declaration of use can also be processed during the 6-month period following the expiration date of the trademark, but additional charges will apply. Once a trademark has been renewed it will be valid for a further ten years and can then be renewed indefinitely.

Since the USA is a first-to-use jurisdiction, continued use of the trademark is essential for maintaining its protection. If a trademark is not used for a period of three consecutive years, it can become vulnerable to cancellation actions for non-use filed against it.

Amazon's brand registry accepts trademarks registered in the USA; the owners can therefore avail themselves of to the advantages such a registration allows for Amazon sellers.

Did you know?

The oldest registered trademark that is still valid in the USA, US Registration Nº11210, was registered on May 27, 1884 and has been renewed every ten years ever since! It belongs to a company that manufactures ropes.

In 2017, the USA was the second jurisdiction in terms of number of trademark applications filed, behind China and before Japan.

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