Trademark registration in the USA

Trademark registration in America is much more important than you think to ensure the success of your businesses

1. Choose the trademark to be registered [the name];
2. Choose the logo to be registered in association with the Trademark;
3. Submit the application for registration to the U.S. Patent and Trademark Office [USPTO].
4. Respond to notices [Notice of Action] from the USPTO's in-house attorney [typically the first review comes 3 months after the application];
5. If there are no objections, send proof of use in commerce of the mark [Statement of Use] within 6 months;
6. The USPTO's approval arrives after about another 6 months;
7. Then follows the Publication of the trademark registration;
8. After publication there are 30 days to receive third-party appeals;
9. If there are no appeals the trademark registration is approved and becomes effective;
10. Remember to renew the trademark after 5 years have passed since the first registration;
11. The second renewal should happen after 10 years, and after that, the registration has permanent validity.
     

It is crucial to analyze registered trademarks before starting a business in the United States

The definition of a trademark in America: "a word, phrase, symbol or design element, or combination of the above, which identifies and distinguishes the source of goods or services”

In America, trademark ownership rights begin when the trademark actually starts to be used in commerce

So registering a trademark with the US Patent and Trademark Office (USPTO) is not necessary to own it. However, it will provide proof that you own the mark and have registered it. Worrying about trademark registration months or years after entering the U.S. market could lead to nasty surprises.

Advantages of registering a trademark

Trademark registration gives access to benefits beyond the recognition of ownership rights

For example, the owner of a trademark registered in the United States is recognized as the holder of the rights to the goods and services specified in the registration, and is entitled to its use on U.S. territory. It is possible to apply for registration even without being a U.S. citizen by indicating a U.S. resident representative delegated to handle the paperwork.

The costs of registering a trademark in the United States

You can choose to register only the name, only the graphic logo or both. Generally everyone chooses to register both the name and the graphic logo at the same time, which is the image most associated with the corporate image [which is made up of the name and the graphic].

The cost of registration varies depending on whether you register only the name or also the logo, and obviously the costs are higher when you register both.

About $2,500 should be budgeted for registration of Trademark and Logo for one class of registration, with an additional $700 for each additional class of reference. We say "budget" because costs can vary depending on several elements, e.g.:

• If there are already registered trademarks in possible conflict, so we need to prepare additional defense documents or do extensive research.
• If the trademark or logo is already being used in commerce in the United States and there is evidence that we can retrieve and send to the Patent Office.
• If the logo already contains the words and you only want to register one intellectual property.

On the other hand, a patent registration made in Italy can most likely be used as a basis for registration in America, but the transition is not automatic. To give some information about the procedure and cost, it is necessary to analyze the patent registration documents in Italy. The patent registration procedure is much more laborious and costly than simple trademark registration.

Duration of trademark registration in the U.S.

Unlike copyrights and patents, trademark rights can last indefinitely if the owner continues to use them to identify their goods or services. The term for registration is 10 years, with 10 years for renewal. After every 6 years during each trademark registration term, however, one must file a declaration that the trademark is still in use in commerce.

Managing trademark registration issues in the U.S.

At the registration stage, a PTO delegate conducts a search of the database of registered trademarks (publicly searchable). Just as is the case in Italy, the risk of possible confusion in the average consumer is taken into consideration when determining the existence of a conflict. The aim is to prevent certain goods and services from being attributed to a different producer than the actual producer. The two factors taken into consideration in the assessment are similarity of trademarks and affiliation to related industries.

Also similar to Italy, in order to be considered "conflicting" trademarks do not need to be identical, but similar enough to be confusing at first glance on the shelf. Chronological order is the generally preferred method of resolving trademark disputes in America: if there are two or more applications for registration of similar trademarks, the one filed first is granted and the others rejected.

Conditions for registering a trademark in the U.S.

• The trademark must have been used in commerce at least once;
• The trademark must have been used in commerce in more than one state or between different nations;
• The trademark is available and has not already been registered by others;
• The trademark does not confuse the public;
• The trademark is not too generic;
• The trademark is not one whose registration is prohibited by law.

You can file for trademark registration even if you have not yet used it in commerce [registration based on intent to use]. In this case the trademark is not immediately registered and protected. The USPTO grants the application for registration temporarily, and within six months you must provide proof of use in commerce in the U.S..

Principal Register and Supplemental Register in the registration of trademarks in the United States

The U.S. Patent and Trademark Office actually maintains two trademark registers: the principal register and the supplemental register.

• The Principal Register of Trademarks is the one we are all familiar with and which provides maximum protection to the trademark in America against competitors.
• The Supplemental Register is a secondary register where trademarks that are not accepted in the principal register can be registered.

The classes of trademark registration in the United States

Trademarks are registered in connection with a class of goods or services. Depending on the product sold or service offered, you are going to register your trademark in the corresponding class. Examples of possible trademark classes:

• clothing
• advertising services
• furniture production
• catering
• automobile accessories production, etc.

you can register your trademark in more than one class. For example, one can register a trademark in the class Household Goods but also Small Household Appliances.

Advantages offered by trademark registration in the supplemental register

• it is possible to use the registration symbol "®";
• it is impossible to tell whether the mark is registered in the principal or the supplemental register from the registration number alone;
• Registration in the supplemental register of trademarks can help in registering the trademark in other countries.

How to register a trademark for the U.S.A.

ExportUSA's services for trademark registration

These are the necessary steps to be able to prepare the trademark registration file in the U.S.:

• Give us a description of your company: what you do, what markets you follow, and, most importantly, tell us if you have ever worked or sold in the United States;
• Precise details of any business contacts and sales relationships you have had with U.S. customers;
• Description of the trademark you intend to register in the US;
• Description of the field or fields to which you wish to extend the protection granted by trademark registration;
• Business name or name of the person who will be the owner of the trademark registration.

Based on this information we will research to determine whether:

• The proposed trademark can be registered;
• If others have already registered the proposed or a similar trademark in the registration classes under consideration.

Then we will provide a detailed report on the options available for registration in the United States. Words, images and combination of text and images can be registered as trademarks.

These are the types of trademarks that can be registered in America:

• Word Mark (“standard character” drawings)
• Design Mark
• Color Mark
• Shape
• Sound Mark
• Scent or Flavor Mark
• Touch Mark
• Motion Mark
• Collective Membership Mark
• Certification Mark

A special kind of trademarks for the U.S. market: Examples of world-famous Sound Marks

• The TV Network NBC
• MGM’s "Lion"
• The Twentieth Century Fox’s intro
• The infamous AOL jingle "You've Got Mail"
• The TIME WARNER ENTERTAINMENT - Looney Tunes Theme Song