How to protect trademark in the US

In the realm of intellectual property, trademarks serve as vital assets for businesses, safeguarding their brand identity and distinguishing their goods or services from those of competitors. The United States offers a trademark registration system that assists the diverse needs of businesses through multiple-class trademark applications.

This allows a single application to cover a variety of goods or services across different classes, providing comprehensive trademark protection in the US and simplifying the registration process.

Filing Requirements in the US

Applicants must select from several legal categories when filing: use in commerce, intent to use, foreign registration, foreign application, or extension of protection under the Madrid Protocol—each about specific circumstances regarding use or registration status.

When filing a trademark application in the US, the following requirements must be met:

• Language: The official language is English. Any non-English documents must be accompanied by a certified English translation.
• Application Contents:
  • Name of the applicant
  • Address for correspondence
  • A clear drawing of the mark
  • List of goods or services
  • Verified statement of a bona fide intention to use the mark in commerce (for intent-to-use applications)
  • Filing fee for at least one class of goods or services

A Power of Attorney is not required for US trademark registration. However, if claiming priority to a foreign application or registration, a certified copy of the Priority Document, translated into English and certified by the translator, must be submitted at the time of filing. The deadline for claiming conventional priority is six months from the priority date.

Applicants can utilize online search databases for US Trademarks and International Trademarks to conduct preliminary searches.

Trademark Examination, Publication, and Opposition in the US

Upon submission, the trademark registration application undergoes a thorough examination process, including:

• Search for conflicting marks
• Review of the written application and amendments
• Examination of drawings and specimen(s) or foreign registration(s)
• Verification of eligibility for the requested registration type
• Confirmation that all required fees have been paid

If the examination is successful, the mark is published in the USPTO’s Official Gazette for opposition. Any notice of opposition must be filed within thirty days after the date of publication, or within an extension of time granted by the Board for filing an opposition.

The deadline to respond to a provisional trademark refusal of an international registration in the US is six months from issuance by the USPTO. No extensions are allowed. Responses must be filed by a local representative in English.

Grant, Validity Term, and Trademark Renewal

The term of a registered trademark in the US is ten years from the date of registration. A US trademark registration may be renewed for successive ten-year periods, provided the mark remains in use in commerce. Renewal applications must be filed within one year before the registration’s expiration date, or within a six-month grace period after expiration. Renewal also requires submitting specimens of actual use and the registrant’s declaration of use.

The processing time from initial filing to registration is approximately 16 months, assuming a smooth trademark registration process without significant delays or objections.

A registered trademark in the US may be canceled if it is not used for three consecutive years during its registration period. Additionally, there is a proof of use requirement between the fifth and sixth years after registration to maintain the trademark’s validity.

Representation by a Trademark Attorney

Foreign trademark applicants must conduct trademark prosecution in the US through a registered US trademark attorney. This ensures compliance with US legal standards and procedural requirements.

This article provides an overview of the trademark registration procedure in the United States, highlighting key aspects such as filing requirements, examination processes, validity terms, and renewal procedures. It serves as a guide for businesses seeking comprehensive trademark protection in the US.