- April 27, 2020
- Posted by: United Legal Experts
- Category: Trademarks
Worldwide businessmen are eager to enter the US market, as everyone believes the USA is the world’s largest economy, which has the capacity to provide their businesses, an opportunity to expand. In the US, registration along with obtaining a license for business is mandatory; however, brand registration as a trademark is equally important. Registering a trademark in the US seems simple, but the process unfolds various challenges that require an in-depth knowledge of US trademark law. This piece will walk through the stages of how to apply for registration of a trademark in the USA.
Select the mark
The registration application process begins with the selection for the mark that you will use. The mark could eligible for registration against a brand name if it is distinctive, unique name, shape, or sound. It may be arbitrary or fanciful, suggestive, descriptive, and generic. Along with this, the mark should mean to use for commerce rather than personal use. Commerce in the context, includes territorial commerce (selling of goods and/or services within the state only), interstate commerce (selling of goods and/or services across state lines), and commerce between the US and foreign countries.
Search the trademark
Once you created your brand name, you need to ensure that you will register an unregistered mark. This requires some digging through the existing trademarks database with the United States Patent and Trademark Office (USPTO) called the Trademark Electronic Search System database (TESS). An easy approach to discover any trademarks, likely to cause confusion with yours, is through design search codes and classes. Though the search needs to be done by a highly skilled professional who would understand how the search is done assuming is several other aspects.
Apply for registration
When you have selected and explored your mark, you can apply for registration and submit your application with the USPTO electronically or by post. The USPTO gives three filing options: Regular, Reduced Fee (RF), or Plus.
A trademark application in the US must contain at least the following:
- Name, email and address of the applicant
- Clear drawing and description of the mark
- List of the goods or services
- A verified statement of a genuine intention to use a mark in commerce (in case of an intent-to-use application)
- Required Specimens (if mark already use in commerce)
- The filing fee for at least one class of goods or services
Progress on the application
Once the application for registration has submitted with the UPSTO, it will undergo complete examination and review. This can take up to 4-6 months. In the first 3 months, a trademark examining attorney (trademark examiner or examining attorney) at the USPTO will assign to the application. If the application finds with any concerns an “office action” that denies all or part of your application includes the reasons for the denial, how you can attempt to overcome it will issue. The applicant must submit a response to the office action providing persuasive reasons on the office action within 6 months from the date the USPTO examining attorney mailed, otherwise it would consider as the applicant has already abandoned the application for trademark registration.
Upon successful examination, the mark will publish in the USPTO’s official gazette, an online publication, for 30 days. During this time, any party may oppose the registration of the mark or come forward with their concerns, if it will register. If any opposition files, then a court-like proceeding (taken to the Trademark Trial and Appeal Board). If not, the USPTO will register the mark and issue a certificate of registration. Remember that issuance of the certificate may take several months after the publication period over.
Furthermore, if the applicant has applied for intent to use the application, then the USPTO will issue a Notice of Allowance, which also requires submitting evidence of mark usage in commerce. Afterward, the applicant needs to submit a statement of use within six months a formal application that outlines the intent for using the trademark. Once the statement has submitted, the USPTO will review the form and, if it meets all requirements, they will issue a registration for the trademark and the mark will officially ‘live’. However, if the requirement will not be satisfied, another office action may likely to be issued to fulfill the requirements as per the standards.
Maintain the registration
The period of a registered trademark in the US is ten years starting on the date of initial registration. The renewal can request within 12 months before the expiration date, or during 6 months after the expiration date upon payment of late renewal fees. Moreover, to keep a trademark registration “live” in the US registration, the applicant requires providing the specimens of actual use and declaration of continued use of the registered trademark for the renewal application.