United States of America Trade Marks
The nature of USA Trade Marks
Trade Mark Protection
Filing a Trade Mark
USA Trade Marks
Before applying for registration of your trade mark, it is recommended to conduct a search of similar pending or registered marks, company names and Internet sites.
Most countries in general give earlier rights to the first to register. In the U.S.A., the first to use a trade mark has the best rights. Accordingly, trade mark rights can be enforced using Common Law Rights.
However, it is still important to register a trade mark in the U.S.A., as it is far easier to show a certificate proving a mark is registered than attempting to provide documentation illustrating use.
USA Trade Mark Protection
Use after Registration
To ensure that a trade mark is protected in the U.S.A., one must provide evidence of continued use in the form of a Declaration of Use between the fifth and sixth year after registration. If the mark is not in use, there must be an acceptable reason.
Non-use of a mark for a period of three years after registration makes the mark vulnerable to cancellation by third parties for those goods or services that have not been used.
If a mark is registered and in continuous use for five years in the U.S.A., one can file a Declaration of Incontestability for the life of the mark, providing evidence of the ownership and exclusive rights.
Scope and validity
A U.S.A. trade mark is valid for ten years and can be renewed indefinitely for periods of ten years. At renewal, use must be proved.
Level of protection
A U.S.A. trade mark confers on its proprietor an exclusive right to use the trade mark and to prevent third parties to use, without consent, the same or a similar mark for identical or similar goods and/or services as those protected.
State Trade Marks
All States in the U.S.A. grant their own trade mark registrations, which are State-wide. These are for trade mark owners that wish to have protection limited to a geographical area.
Enforcing your rights
A registration grants a proprietor an exclusive right to prevent unauthorized use of the mark in trade without his/her consent. If an unauthorized third party engages in such practices, it is guilty of infringing the exclusive right of the proprietor and the proprietor can act against these infringements.
USA Filing a Trade Mark Application
The U.S.A. application fee for a registration includes one Class of goods and/or services. There is a charge for each additional Class.
The forms that are sent to the US Patent and Trademark Office [“US PTO”] identify your trade mark, the goods and/or services that you wish to protect and the name and address of the legal owner of the mark.
One must make a declaration that:
The trade mark is already being used in the U.S.A., or
There is an intention that the mark will be used in the U.S.A., or
The U.S.A. application is based on an application or registration for the same mark in a "country of origin" of the applicant.
A filing number and date are confirmed, provided that various formalities have been completed.
The US PTO examines your application and determines whether the sign is registrable as a trade mark, that the goods and services have been correctly classified and if there are any prior existing identical or similar U.S.A., or International registrations.
If the US PTO raises any objections, you are given an opportunity to contest them. Once any objections have been successfully overcome, your trade mark is published in the US Official Gazette and advertised so that other parties may raise an objection to your mark. All objections must be resolved and the mark can then pass to registration.
Notice of Allowance
Once your trade mark has passed through the advertisement stage and any objections have been satisfactorily determined, a Notice of Allowance is sent by the US PTO.
If the mark is already in use, proof of such use must be provided. Where the application is based on an intention to use, proof of use needs to be given within six months (subject to extensions of the term). An application based on a mark from a country of origin requires a copy of the home registration certificate.
Once the use requirements are satisfied, your mark will proceed to registration and a certificate issued.
Priority
You can claim ‘priority’ from another application. This means that within a six month priority period from the date of filing of a first application for the same trade mark, one can claim the same date of filing as this first application.
Equally, if the U.S.A. is the first application filed for your mark, this can be used to obtain priority for subsequent applications within the priority period. This can be a very useful way to start with one application and slowly build up your portfolio, thereby spreading the cost of a registration programme.