Intellectual Property (IP) has become the vital part of today’s business world. IP refers to creations such as inventions, literary and artistic works, designs, symbols, names, images, devices, etc. being used in commerce. Intellectual Property is generally being protected in law by patents, copyrights, and trademarks which help its owner to earn recognition or financial benefits from what they invent or create. By compelling the right balance between the interests of the innovators and the communal interest, the IP system aims at fostering such an environment where creativity and innovation can flourish.
About Trademark Registration in USA
Trademark registration in USA and it’s management at the federal level is governed by the United States Patent and Trademark Office (USPTO). Alongside, each state operates its own local trademark registration for the businesses operating within a limited location and do not desire any additional protection that is being provided by the federal registration.
The legal footing of a trademark in the USA is provided by the Trademark Act 1946, commonly known as Lanham Act.
The federal registration serves various types of registration options in order to provide the best possible protection for a variety of needs and circumstances. The Principle Register requires the highest bar of fulfillment for its registration along with the highest level of protection to the brands in the USA. The Supplemental Register bestows some protection to the brands that fail to qualify for the federal registration on Principal Register. In some cases, there is a possibility that the marks which initially qualify for Supplemental Register can later qualify for Principal Register.
The federal and state registration in the USA is based on:
- First-to-Use System: This recognizes the rights of the first person to use a mark for commercial purposes. The protection under this system is not very robust.
- Intent-to-Use System: The use of the mark under this application must be shown within five years of the application. This does hold a few exceptions, though.
Types of Trademark Registered in USA
The USPTO welcomes trademark application registrations for both traditional marks like word, design and combination marks along with non-traditional and non-visual marks like colors, shape/configuration, sound, scent, flavors, touch and motion marks. It also accepts an application for collective marks and certification marks.
For further description on the types of trademarks registered by the USPTO Read “_____________”.
Requirements to file Trademark Application in the USA
- Applicant’s Name
- Correspondence Details
- A clear drawing of the Mark and its description.
- A complete listing of goods and services under which the mak will be sold or offered.
- For foreign applicants, Designation of a Domestic Representative.
- The filing fee for at least one class of goods or services.
- English translation or transliteration of non-English words used in the mark.
- To apply for use-based applications :
1. A specimen of the mark that is already being used in respect to at least one class of goods or services.
2.The date of first use of the mark anywhere.
3. The date of first use of the mark in commerce.
- To apply for intent-to-use applications: A bonafide intent to use the mark in commerce in respect to the goods and services specified in the application.
Time Requirement for Trademark Registration to be issued
Conventionally, it takes around 12 months for a trademark registration in USA to be issued. The entire process can be stretched longer of Office Actions are issued, the complete documents aren’t available or an objection is raised.
Benefits of Trademark Registration in USA
The top benefits of registering a trademark in the USA are:
- It discourages others from using confusingly similar marks by putting the mark in the trademark availability search. This also serves the prevention of trademark infringement.
- Provides nationwide notice of ownership of the mark registered with the USPTO, preventing others from claiming their subsequent adoption of the mark.
- It Grants the right to use the ® mark against the goods or services listed in the registration and hence giving the product more marketing cachet and putting competitors on notice.
- It grants the right to the trademark owner to sue the infringer in the federal court and makes him eligible to obtain treble damages and attorney fees, thereby providing the significant potential for monetary recovery.
- Provides a basis for foreign registrations to help protect the mark worldwide and facilitate business expansion.
Steps for Trademark Registration in USA
Trademark registration is an extremely long process involving the following tedious steps:
Step 1: Track Eligibility of the mark for Registration
To obtain the Federal Trademark Registration the mark must be already being used in commerce or the intent is to use the mark in commerce in the future. If it is already in use then the standard USPTO application must contain a declaration, a specimen of the mark along with the date of first use. But if the mark is going to be used in future then the standard application must contain a bonafide declaring the intent of the owner to use the mark in commerce.
Generally, the acceptable use is as follows:
For Goods: The mark must be visible on the goods, the container of the goods, or display associated with the goods that are sold or transported in commerce.
For Services: The mark must be displayed or used in the advertising and the sale of the services rendered in the commerce.
Step 2: Conduct Trademark Search
The next most crucial step is to conduct a trademark search in the USPTO Trademark Database before filing the application. This is to determine and ensure that no person has already claimed trademark rights on the particular mark or on marks similar to it. One can easily conduct a free online search via TESS (Trademark Electronic Search System) database.
If the mark contains any design element then it will be searched using a design code. To identify a proper design code it is vital to consult the Design Search Code Manual.
Step 3: Registering a Trademark Application
After successfully completing the trademark search the owner can file the application for trademark registration with the USPTO. It is mandatory to fill the trademark registration application in the prescribed manner along with the cited fees. Trademark applications can be filed online by TrademarkCart in a simple and hassle-free process.
Step 4: Procedure After Completing the Filing
The USPTO issues an official filing receipt within 14 days after the successful completion of the application form. This is used to track the progress of the application status.
Typically a trademark application registered with the USPTO is examined three to four months after its filing. If the Examiner objects to the registration of the mark on substantive grounds or raises any informalities that are to be addressed before allowing the application to proceed for any further examination then an Office Action specifying all the objections will be issued. The applicant should mandatorily respond to the Office Action within 6 – months of its mailing or the application stands abandoned.
Step 5: Advertising in the Official Gazette
Once after all these issues are resolved and there are no more objections raised by the examiner, the mark is published in the Trademark Official Gazette. A Notice of Publication will be issued to the applicant listing the publication details. Any third party who believes that it will be harmed by the registration of the mark is eligible to oppose the application or file an extension request to oppose within 30 days of the advertisement date.
Step 6: Issue of the Registration Certificate or Notice of Allowance
Once all the issues and oppositions are resolved, the USPTO issues a Certificate of Registration for use-based applications or a Notice of Allowance for intent-to-use applications.
The intent-to-use applicant has 36 months from the date of Notice of Allowance, known as the “allowance period” in order to submit a proof of the use, else the application stands abandoned. During the allowance period, it is mandatory for the applicant to file either a Statement of Use or a Request for extension of time to file a Statement of use indicating a continued bonafide intent to use the mark every six months. After the successful acceptance of the Statement of use by the USPTO, the Certificate of Registration will be issued.
Types of Application Forms for Trademark Registration in USA
There are three types of applications for Trademark Registration in USA:
- The Standard Application with a fee of $400 per class.
- TEAS (Trademark Electronic Application System) Reduced with a filing fee of $275 per class and the applicant is required to agree to:
1. receive email correspondence only form the USPTO
2. file submission electronically
- TEAS Plus with a filing fee of $225 per class and the applicant is required to agree to:
1. file a complete application, i.e. no application field should be left incomplete
2. use the USPTO Identified Manuale Language for the description of goods and services
3. pay the complete fees of all the classes at the time of the application submission.
4. file electronically
5. receive email correspondence only from the USPTO
Despite the great efficiency of the USPTO and the desirability to have a trademark registration in the USA, both domestically and afield, the volume of First Office Actions issued is considerably high along with the USPTO issuing the highest number of preliminary refusal to international applications using the Madrid System.