The United States, the third largest country by population and the largest economy in the world, is an attractive destination for business. Registering a trademark in the U.S. involves preventing infringements and protecting your legal rights in case of violations.
The trademark registration process in the U.S. typically takes between 12 to 15 months. However, this timeline can be extended due to objections or legal issues. You can check the current processing times on the United States Patent and Trademark Office (USPTO) website.
The United States Patent and Trademark Office (USPTO) is the official body responsible for trademark registrations in the U.S. Additionally, the U.S. is a member of the Madrid System, which allows you to file a trademark application in the U.S. through the World Intellectual Property Organization (WIPO), based on a national application made in another member country.
Foreign applicants seeking trademark registration in the U.S. must be represented by a U.S.-licensed attorney registered with the USPTO. According to the USPTO, the applicant’s “domicile” or “principal place of business” determines the basis of the application.
If your trademark is already registered (or applied for) in another country, you can file for U.S. trademark registration with priority based on that registration. This can speed up the process and increase the likelihood of approval. However, this priority request must be made within six months from the date of your foreign application.
The U.S. legal system is based on the “first use” principle. This means the person or entity that first uses a trademark in commerce holds the rights to it. A trademark can be protected before registration, as long as it is being used in commerce. However, this protection is limited compared to federally registered trademarks. For example, in case of trademark infringement, legal action can only be initiated if the trademark is officially registered.
When filing a trademark application, you must state the legal basis for your right to register the mark. The basis for filing a trademark application can be one of the following:
In the first case, you must submit a “specimen” showing the mark’s use at the time of filing. In the second case, you will be asked to submit the proof later for an additional fee. In both cases, the trademark will not be registered until evidence of commercial use is provided.
The trademark registration process in the U.S. can be complex, but the USPTO has established timelines for both “Use in Commerce” and “Intent to Use” applications. The simplified steps in the process are as follows:
Unlike many other countries, the USPTO may reject your application if it finds a previously registered or pending trademark that could be confused with yours. Therefore, it is crucial to conduct a thorough search for similar trademarks before applying.
To avoid rejection, you may need to adjust your product or service descriptions to eliminate overlaps with other marks. In some cases, modifying the trademark name or logo may be necessary. Alternatively, you can appeal the decision and argue that there is no risk of confusion.
A trademark in the U.S. is valid for 10 years from the registration date. Between the 5th and 6th year, the trademark owner must file a declaration confirming that the trademark is still in use for the listed goods and services, along with a specimen for each class. This can be done through the USPTO website for a fee.
A trademark can be renewed for another 10 years by filing a renewal application during the 9th and 10th years. As long as the trademark is in commercial use, it can be renewed indefinitely. If the renewal deadline is missed, the trademark can still be renewed within a 6-month grace period, subject to an additional fee.
If you need assistance with registering, protecting, or renewing your trademark in the U.S., contact Yellow Law. Our experienced attorneys are here to guide you through every step of the process and ensure that your intellectual property rights are safeguarded.
