The value of trademark registration in the U.S. market

The commercial protection granted by trademark registration in the United States is realized in two ways

On the one hand it protects you from U.S. competitors who want to use your brand in America, and on the other hand it ensures that competitors do not try to prevent you from using your brand in the U.S.

You should view the cost of registering a trademark in the United States first as insurance against disruptive actions by competitors and second as an investment. As your brand becomes more commercially established in America, it becomes increasingly essential to proceed with registration. As your company begins to operate in the United States of America, it is easy to overlook the importance of registering your trademark in the United States.

It is something you should do right away before your competitors do. The "real-life" story shown in the sidebar exemplifies in a simple way what the consequences of not registering your trademark in America can be. This page illustrates in a very practical way what concrete steps you need to take to register your company's trademark or product in the United States. We do not go into legal analysis on trademarks and patents in America; there are law firm pages that already do that. Our purpose, as always, is to give practical guidance to Italian companies that want to enter the United States of America successfully.

You can register a trademark if you intend to use it in America in the future

This is the case of a newly opened company that has not yet started operating and selling in the U.S.

In this case, the trademark application is granted on a temporary basis, so to speak, and within six months it is confirmed following proof of use in commerce in the United States. Proof of use takes the form of evidence of participation in trade fairs, printing catalogs for the American market, advertisements, etc.

Or you can register the trademark for the United States even when you have already started using it commercially

The trademark can be registered even if it is not new

This is the case of companies that after opening a corporation in America began to operate actively by attending trade shows, selling to distributors and retailers, finding representatives and whatnot. You can register the trademark whenever you see fit.

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

Classes of registration, trademark availability search for America, expiration and renewal of trademark registration, types and forms of registrable trademarks

In America, a trademark is protected merely by being used in commerce. If you use one of your trademarks in commerce in the United States, the mere fact that you have used it makes you its owner. It guarantees its protection against third parties [we are talking about trademarks that are registrable and not already owned by others].

Trademark registration makes it easier to to protect your trademark against competitors in the U.S. market because it makes it official and public that your brand is registered for America.

Before applying for trademark registration, the first thing is to do a search to see if the trademark you intend to register for use in the United States is free [i.e., not already registered by others] and registrable.

Trademark registration in America must be done by classes of use. In other words, you have to state for which classes of service or product you intend to register the trademark. If you are a fashion company, it is useful to register the trademark in the class corresponding to "women's clothing" for example. It is also helpful to register the trademark for classes "adjacent" to the class corresponding to the main activity so as to have the maximum possible coverage.

Within six years from the date of registration of the trademark for America, you must confirm its use in commerce. Trademark registration lasts for ten years. Starting from the ninth year, you can apply for trademark registration renewal.

A trademark for the United States can be the name of a company or product, or the name and the logo, which is an image that represents the trademark. The logo can be the graphic image of the word constituting the trademark or it can be any image. You can register a black and white logo or you can register a color logo. If the registration is for a color logo, you open yourself up to the possibility that others may register the same logo in America but in different colors. It is a good idea to register the logo in both color and black and white.

Trademark registration for the United States of America is handled by a federal agency: the USPTO - United States Patent and Trademark Office.

Technicalities in trademark registration for the USA

Trademark registration in the Principal Federal Register of Trademarks for the United States and registration in the Supplementary Register

Trademarks that are sufficiently distinctive and unique are registered in the principal trademark registry and acquire the maximum protection in commerce in the United States.

Trademarks that do not have such characteristics of uniqueness [e.g., trademarks that are surnames or trademarks that are names of geographical locations] can only be registered in the supplementary trademark database, which does provide protection but not as full as that provided by the main database. Registration in the supplementary register still allows you to object in case others want to register the same mark in the same classes or object to your company's use of the mark.

Copyright, Patents and Inventions, and Protection of Intellectual Rights in General

In addition to trademark, U.S. law also protects intellectual property rights, copyrights, and inventions in general

In this way, Italian companies that want to patent the result of their research activities or their inventions in America can always do so through the USPTO. Likewise, one can protect songs, videos, software, writings and even ideas and applications of ideas in the most diverse fields and be granted commercial protection in America. Beyond protection against infringement, copying or unfair exploitation by third parties, patents and copyrights offer the possibility of licensing use in exchange for royalties.

WARNING

It should be noted that the information in this article in no way constitutes legal opinion or professional advice, but merely general information of informative nature.