Important notes in trademark registration in the US

When filing a trademark application in the US, what should the applicant pay attention to and what requirements should be met? The answer will be in the article below.

First to use rule

When it comes to gaining trademark rights in the United States, the “first to use” rule is followed. This implies that if you and another party dispute over a trademark, whoever used it commercially first are likely to have rights to it, even if they didn’t register it first.

You must nominate the use of your trademark while filing a trademark application in the United States, for example:

• If you already use your trademark in commerce in the United States, you should nominate “use in commerce”.
• If you haven’t begun using your trademark yet but plan to do so soon, you’ll need to file an “intent to use” declaration. Intent to use must be more than just an idea that you might use the trademark – you must be market-ready, or your trademark will be refused. You will need to fill out extra papers and pay additional costs. If you file an application on an “intent to use” basis.

What types of applications may be filed?

Traditional marks (word, design, and combination marks) as well as nontraditional and non-visual markings (color, shape/configuration, sound, fragrance, flavor, touch, and motion marks), collective marks, and certification marks are all accepted by the USPTO.

• Word Mark (“standard character” drawings) – All of the letters and words in the mark are written in Latin characters, and all of the figures are written in Roman or Arabic numerals. There is no design element in the mark, which simply comprises conventional punctuation or diacritical markings. There are no styled letters or numerals.
• Design Mark (stylized wording and/or design) – For mark photos, JPG format is preferable, with a file size of 5 MB or less. A scanned image must have a resolution of 300 to 350 dots per inch, a length and width of 250 to 944 pixels..
• Color Mark – The applicant must show that he or she has gained uniqueness. Color marks are visible, thus they should be portrayed in color drawings accompanied by::

1. A color claim naming the color(s) that is/are a feature of the mark and 
2. A separate statement describing where the color(s) appear(s) and how it/they is/are used in the mark. The generic name(s) of the color(s) should be used in the color claim and location statement.

• Shape (Three-Dimensional) Mark (the configuration, shape, or design of a product or product packaging) – The applicant must provide a description of the mark that indicates that it is three-dimensional, as well as a sketch that depicts a single three-dimensional rendering of the mark.
• Sound Mark – The applicant must submit an audio file of 5 MB or less in electronic format (.wav,.wmv,.wma,.mp3,.mpg, or.avi). A thorough description of the sound, including any words or lyrics, must be provided by the applicant.
• Scent or Flavor Mark – The applicant must provide significant evidence of acquired uniqueness, a thorough written description of the fragrance or flavor, and a sample of the scent or flavor that fits the requisite description.
• Touch Mark – The mark must be represented graphically.
• Motion Mark – If the mark incorporates motion, the applicant may submit a design depicting either a single point in the movement or up to five freeze frames depicting various points in the movement, whichever best expresses the mark’s commercial impression. A specimen in.wav,.wmv,.wma,.mp3,.mpg, or.avi format can also be linked to the TEAS form. Audio files should be 5 MB or less, and video files should not be larger than 30 MB. The motion must also be described in detail by the petitioner.
• Collective Membership Mark – Members of a cooperative, an association, or any other collective group or organization are required to use the mark. A description of the nature of the membership organization, such as by kind, purpose, or area of activity of the members, must be included in the application.
• Certification Mark – Any word, name, symbol, and/or device used by someone other than the owner to certify regional or other origins, material, mode of manufacture, quality, accuracy, or other characteristics of their goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

What are the requirements to obtain a filing date?

• The applicant’s full name.
• A name and address to which the United States Patent and Trademark Office (USPTO) should send correspondence.
• For design and other nontraditional marks, a clear drawing of the mark.
• A list of the goods and/or services sold or offered in connection with the mark is or will be provided.
• At least one type of product or service must have a filing charge.

Some pieces of advice

According to the USPTO, all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings must be represented by a lawyer licensed to practice law in the United States. Therefore, you will require a US-licensed attorney to represent you in any trademark disputes if your permanent legal residence or primary place of business is outside of the United States. Requirement for a US licensed attorney for applications submitted under the Madrid System does not apply to the filing of the application, but it does apply to any later actions before the USPTO.