Trademark registration applies to all U.S. States as well as any territory under the United States jurisdiction and control, including the American Virgin Islands (VI), in American Samoa (AS) and Guam (GU).
Trademarks are protected by registration. An unregistered trademark may be protected by the U.S trademark law if used in commerce (common law). The United States applies the first-to-use system.
US Trademark registration: Requirements
- Name of the applicant
- Address of the applicant
- Description of products/services the applicant commercializes
- Name of the trademark
- Basis for filing: "Actual Use", "Intent to Use" or "Foreign registration"
If you have already used your mark in commerce, you may file under the "use in commerce" basis. If you have not yet used your mark, but intend to use it in the future, you must file under the "intent to use" basis. Under certain international agreements, you may file in the U.S. based on a foreign application, foreign registration, or international registration, in this case, the trademark and the description must be identical to the filed US trademark.
US Trademark Registration Process
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Our intellectual property attorney will file your trademark within 5 business days.
- 10 years starting from the registration date.
- Within 30 days from the date of publication.
- The grace period is 6 months from the date of expiration of the trademark.
Office Actions when Registering a Trademark in the US
More than 60% of all trademarks application receive objections (called "office actions") in the USA, this makes the United States Patent and Trademark Office (USPTO) one of the most demanding Trademark Offices. Bonamark adds value to the regular registration by running additional tests to ensure that all the conditional are met.
The most typical issues which lead to an objection are:
- likelihood of confusion;
- specimen refusal;
- identification and classification issues;
- translation required;
- clarifications required;
- etc.
In order to check if 2 trademarks are confusingly similar, the United States Patent and Trademark Office uses the DuPont Factors. "We determine likelihood of confusion by focusing on the question whether the purchasing public would mistakenly assume that the applicant's goods originate from the same source as, or are associated with, the goods in the cited registrations. [citation]. We make that determination on a case-by-case basis, [citation], aided by the application of the factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Those factors are:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
- The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
- The fame of the prior mark.
- The number and nature of similar marks in use on similar goods.
- The nature and extent of any actual confusion.
- The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
- The variety of goods on which a mark is or is not used.
- The market interface between the applicant and the owner of a prior mark.
- The extent to which applicant has a right to exclude others from use of its mark on its goods.
- The extent of potential confusion.
- Any other established fact probative of the effect of use."
Declaration of use: USA
A trademark owner must file a Declaration of Use between the fifth and sixth year of registration along with a specimen of use. At the same time, the trademark owner can claim a "incontestability” status. Note, that even if your trademark registration is base on a foreign registration or international registration, you still will have to file the Declaration of Use in the USA and actually use your trademark in the US.
If the documents are not filed, the trademark will be cancelled.
Specimen of use
The specimen of use is a proof that the trademark is used in the US. For products, the specimen could be a photo of an actual product with the trademark on it, for services - promotional materials. However, there are several other options, please contact us, if you have any questions.
Cancellation of trademarks in the US
An opponent may file a cancellation against the trademark at any time. If the trademark was in use during last 3 years, the opponent will have to prove that the trademark was abandoned with no intention to use it in the future. A trademark which was not used for more than 3 years is deemed abandoned.
US Trademark Application Cost
The official fee for filing a trademark application in paper in United States is USD 600 per class.
The official fee is USD 400 per class for a trademark application filed electronically using the Trademark Electronic Application System (TEAS Regular). The filing fee is USD 275 per class when using TEAS Reduced Fee (TEAS RF) and USD 225 per class when using TEAS Plus.
This filing option applies to simplified applications using predetermined goods and services.
Our US Trademark Protection Services
We offer the following services in the United States (USA):
- Trademark Search
- Trademark Registration
- Trademark renewal
- Trademark oppositions
- Defenses in case of oppositions or objections/office actions in the United States
- Trademark assignment
- Change of name/Change of Address
If you are interested in any of these services, please do not hesitate to contact us.
USA Trademark Office
Address: P.O. Box 1450, Alexandria, VA 22313-1450
Telephone: (1 571) 272 8600