Trademark Registration Procedure in the US

In the competitive landscape of modern commerce, trademarks play a vital role in distinguishing your goods or services from those of competitors. A trademark can be any word, phrase, symbol, design, or combination of these that identifies and distinguishes your offerings.

This article will provide a comprehensive guide to the trademark registration procedure in the United States, from initial search to final registration and renewal.

What is a Trademark?

A trademark is an identifier of the source of goods or services, providing legal protection and helping to prevent counterfeiting and fraud. The term “trademark” encompasses both trademarks and service marks—trademarks being used for goods and service marks for services.

Conducting a Clearance Search

One of the most common reasons for trademark application rejection is the likelihood of confusion with an existing trademark. To mitigate this risk, conducting a thorough clearance search is crucial. This involves searching:

1. The USPTO Trademark Database: This includes federally registered and applied-for trademarks.
2. State Trademark Databases: These databases may contain marks not registered federally but still in use.
3. Internet Searches: Identifying unregistered marks in use that might pose conflicts.

Although the USPTO examining attorney will conduct a search, this is limited to the federal database. Hence, a broader search is recommended to ensure no existing conflicts.

Filing Requirements in the US

The official language for trademark applications in the US is English. Any non-English documents must be translated and certified. A trademark application must include:

• Applicant’s Name: The legal name of the individual or entity applying.
• Correspondence Address: A reliable address for receiving communications.
• Clear Drawing of the Mark: A visual representation of the trademark.
• Goods or Services List: A detailed list of the goods or services the mark will cover.
• Bona Fide Intent Statement: If applying based on intent to use, a verified statement of intent.
• Filing Fee: Payment for at least one class of goods or services.

The submission of the Power of Attorney is not required when registering US trademarks. If claiming priority to a foreign application, a certified copy of the Priority Document, translated into English, must be submitted within six months of the priority date.

Examination of the Application

Once submitted, the application is assigned a serial number and reviewed by a trademark-examining attorney. The examination includes:

• Conflict Search: Checking for any existing conflicting trademarks.
• Written Application Review: Ensuring compliance with all legal requirements.
• Amendments and Specimen Review: Assessing the validity of amendments, drawings, and specimens.

Dealing with Office Actions: if the examining attorney finds that your trademark isn’t registrable, they will issue an office action. This letter outlines why registration is refused and may suggest ways to amend the application. You must respond by the deadline provided to correct any problems. A successful response leads to approval for publication; otherwise, a final office action is sent.

Final Office Action and Appeals: A final office action signifies that your trademark won’t be registered unless you appeal to the Trademark Trial and Appeal Board (TTAB). Winning the appeal results in approval for publication. Failure to respond or losing the appeal means your application will be abandoned.

If no issues are found and there are no conflicting trademarks, your mark will be approved for publication.

Publication and Opposition

Upon approval, the trademark is published in the USPTO’s weekly Trademark Official Gazette, starting a 30-day opposition period. During this time, any party who believes they would be harmed by the registration can file a Notice of Opposition, leading to a legal proceeding.

If no opposition is filed, the application proceeds towards registration. For use-based applications, the mark registers directly. For intent-to-use applications, a Notice of Allowance is issued, and the applicant must file a Statement of Use (SOU) with supporting specimens.

Registration and Renewal

A registered trademark is valid for ten years, with renewals available every ten years provided the mark is in use. Renewal applications should be filed within one year before the expiration date or during the six-month grace period post-expiration. Proof of use must be submitted between the fifth and sixth years following registration to maintain validity.

Failure to use the trademark for three consecutive years may result in cancellation.

Representation by a Trademark Attorney

Foreign applicants should hire a registered US trademark attorney for prosecution. This ensures compliance with US legal standards and navigates the complexities of the trademark registration process effectively.

Registering a trademark in the US is a complicated process requiring careful planning and execution. From conducting a thorough clearance search to navigating the examination, opposition, and renewal stages, each step is critical for securing and maintaining your trademark rights.