How to register a trademark in the USA? [Specimens of Use examples]

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The process of trademark registration is not that easy, especially when it comes to the registration in the USA.

 

So what should you know before the filing of your mark in this country?

First of all, you should know that only licensed local attorneys are eligible to submit applications to the US Trademark Office. Thus, the first step you should do is to find an experienced US attorney or a company like Bonamark which has its local licensed agent in this country.

It is important to know that unlike many countries, the United States is a first to use country, which means that in the US the one who used the trademark first will be owning common law rights. That’s not exactly as good as having a registered trademark, however, this provides your brand with some protection.

According to this info, you cannot register your mark if your business has not been launched in the USA. However, there are some loopholes which we will discuss later.

Before applying for your trademark, you should choose what will be your "basis" for filing. Therefore, when you start the filing process, you will need to pick between 3 options:

  1. Actual Use (Use in commerce) basis – you are currently using your trademark in commerce for all your goods or services.
  2. Intent-to-use basis - you have a genuine intention to use your mark in commerce with your goods or services in the near future.
  3. Foreign registration basis - you own a foreign registration of the same mark for the same goods or services in your country of origin.

Once you have decided on what basis for filing to use, you should collect all the proper documents: 

  • for the “Actual use” - a Specimen of Use, 
  • for the “Foreign registration” - a certificate of registration in your own country. 
As you may see, no additional documents are required in order to proceed using the “Intent to Use” basis, this means that you may start the filing procedure right away. However, you should know that this basis requires paying an additional fee and submitting a Specimen of Use within 6-7 months from the date of filing.
The specimens of use are subject to extremely strict US rules. A specimen of use is a real example of how the mark is being used on goods or in association with services. Submitting a proper specimen is one of the major requirements of the US Trademark Office for accepting your application. 
Good samples of Specimens could be a real photo of the mark stamped on the product or its packaging OR a screenshot from your website or online store showing your mark next to the product (with prices in USD and ordering information) as well as a screenshot of an app store showing the mark next to the “download” button. 
Specimen of Use for a US trademark (example)
Why this is a good Specimen of Use:
  1. Shows a real product
  2. The photo was not digitally altered
  3. The trademark name is clearly visible.
Another example of SOU for a US trademark
Why this is a good Specimen of Use:
  1. The name of the trademark is clearly visible.
  2. The product is shown.
  3. There is a ADD TO CARD button.
  4. The URL of the webpage is present.
  5. The price is in the US$.

 

Specimen of Use
Why this is a good Specimen of Use:
  1. A real, not edited photo of the packaging. 
  2. The trademark name is clearly visible.
  3. The type of product is mentioned on the packaging.

Specimen of Use - Example

Why is this a good Specimen of Use:

  1. The name of the trademark is visible.
  2. There is a description of the service offered.
Specimen of Use (example)
  1. The price is in US$.
  2. The name of the trademark is visible.
  3. There is a description of the product. 
  4. The URL-address is present

What else should I know?

Despite the fact that trademarks are registered for periods of 10 years, in the USA you will need to prove that you use your mark in the United States between the 5th and 6th year after the registration date. That’s why we recommend collecting proofs in order to renew your registration.

By the way, in accordance with the updated rules, the US Office will require an applicant’s email address, which will be published online in the trademark database. We recommend adding the email address monitored by the owner that is created specifically for communicating with the U.S. Trademark Office so the applicant will not miss any important news and updates.

Please note that it should not be your personal email or the email you use frequently. The fact that it will be published means that you are going to receive a lot of spam. You might want to create a separate email address and check it from time to time.

If you decide to employ our service we will guide you through the whole process and the paperwork. We will do the rest and keep you posted on the progress.

 

 

Our Services

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International Trademark Watch

Be informed of recently applied similar or identical trademarks.