Trademark registration in the USA: Guideline

Trademark registration is becoming more and more in demand in the fast-developing market. The reason of it is a willingness of people to protect own goods or services from unfair competition. And the easiest way to do that is to register a trademark:) In this article main steps of its process and answers on frequently asked questions by applicants will be provided.

 

What is a trademark at all? Law of the USA defines it as a word, phrase, or logo that identifies the source of goods or services.  In order to register it the following actions are needed to be performed:

1. Determine your TM, international class and beneficiary of your TM.

It is very important to pay enough attention to the first step of its procedure as such details inconsistencies with your case might have negative consequences on using your trademark in the ways you have already planned.

The very first step is the selection of the mark you want to register. You need to pay attention to two main factors:

  • whether your mark is registrable;
  • how difficult it is to protect the mark.

Another important detail is the trademark international class. Such classes categorize the different ways that the trademark is used. For example, the most popular classes for IT companies are 9th and 42th classes which apply to Electrical and Scientific Apparatus as well as Computer and Scientific types accordingly. If the trademark in the application is used with goods/services in different classes, you shall pay a fee for each class separately.

Since the sphere of both classes is related, it is quite easy to choose the wrong one. If you do, your application might be cancelled without giving you money back. Therefore, it is recommended to contact a lawyer to be sure that the application is correctly applied.

Whether you want to register a trademark for a legal or natural person depends only on you. For example, a trademark is registered for an individual when TMs are used on an intermittent basis by different companies or other entities. It allows you to quickly close one company and immediately allow the use of TM by another company. On another hand, a legal person might be indicated as a beneficiary of a trademark if you want to increase the capitalization of the company at the expense of intangible assets, and you are also confident in the durability of the legal entity.

Before filing an application, it is truly recommended to conduct a search via the USPTO database. It allows you to understand whether someone is already applied with the same or quite a similar mark for registration. This situation might be a basis to cancell your application.

 

2. Prepare and submit online application form.

Law of the USA prescribes to options of application:

  1. Application for use of the trademark;
  2. Application for bona fide intention to use the trademark.

The first one should consist of a specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark. Basically, the meaning is that if you’re stating the mark is in use in commerce, you’re telling the USPTO that the mark is actually being used in the USA or between the US & another country.


Another application shall include specification of the applicant’s domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark. This type of application reserves your a right on a trademark while you are only going to present your business as well as prevents others from applying for a trademark based on actual use if they file after you.

After your appropriate application is ready, submit it through the Trademark Electronic Application Form. Currently, USPTO has three application filing options available, each with its own corresponding processing fee: TEAS Regular, TEAS Plus and TEAS Reduced Fee. More information about these filling options you might read here.

We recommend using TEAS, but you may file a paper application at the highest cost per class of goods or services:)

 

3. Wait until your application will be evaluated and respond to letters if it is needed.

If your application met minimum filing requirements, a serial number will be assigned. Application with the serial number will be forwarded to examining attorney, which is supposed to evaluate your application based on all applicable rules and required fees. Such period takes time. Usually, up to 12 (twelve) month is required for this examination.

Under this period, your attorney might send you an Office Action (non-final and final Office Action) which may be as serious as a refusal of your application or just a request to amend some information. If such document was received, you have up to 6 (six) months of the issue date for response. In another case, your application will be abandoned.

Take into account that response to the first Office Action does not require any fees. Find more about Ofiice Action here.


4. Wait for the final decision on your application.

If your examining attorney considers your application without any objections for registration, he publishes it in the “Official Gazette”. From the moment of its publication, it gives 30 (thirty) days to another party either to file an opposition for the registration or an extension of time for such opposition. In case no opposition was applied you proceed to the next stage of the trademark registration process.

Next stage of registration process bases on the type of form you filled up: whether it was used in commerce or intent-to-use form. In case the first form was applied, USPTO registers your trademark and sends you an official certificate about it. If the intent-to-use form was filled, then notice of allowance will be issued. NOA is a written notification from the USPTO which provides that the trademark has been allowed for registration. Then, you have another 6 (six) month to reply for this document with Statement of Use form or ask for a time extension. Addition fee of $100 (one hundred) American dollars is required.

Pay sufficient attention to filing the Statement of Use form, especially to the specimen (an example of how you use your trademark in the marketplace)  you are going to attach to the form. Specific requirements shall be met there. For example, if you want to register a trademark of dating services, you might take a screenshot consisted at least of: 

  1. your website showing the trademark,
  2. possibility to order the services,
  3. and your quote for such services.

In case you haven’t met all the needed requirements the USPTO might issue you Office Action again. If your response does not cover all objections indicated in this letter, then the final Office Action will be sent. However, if you disagree with that for an additional fee you might complain to the Trademark Trial and Appeal Board. If your response does cover all requirements then the registration certificate is issued.

 

5. Maintaining a federal trademark registration

In order to keep your trademark in force, you are supposed to fill maintenance documents. Owners of registrations not based on the Madrid Protocol must file a Declaration of Use and/or Excusable Nonuse under §8 of the Trademark Act (filed between the 5th and 6th years after the registration date). Owners of registrations not based on the Madrid Protocol must file a Declaration of Use and/or Excusable Nonuse and an Application for Renewal under §§8 and 9 of the Trademark Act between the 9th and 10th years after the registration date, and every 9th and the 10th-year period thereafter. In case you failed to file such documents you will be obliged to start the registration process over again. We doubt you want to go through the entire process again.

Pay attention to the fact that law of the USA requires to hire the US-licensed patent attorney to represent foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings at the USPTO since 3th of August 2019.

Our company has a long-term relationship with US professionals who can assist you within the USPTO registration process. All you need to do to register your trademark in US is just to fill the form below J

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