How to apply for a mark in the USA:
1. Start with a Free TM Search. We will check if there are any obvious conflicts. You will know if it's worth moving forward with the mark.
2. Attorney's opinion (a.k.a. Study) In some cases we may recommend asking our attorney to review the case and prepare a detailed registration report. That's an optional non-obligatory service.
3. Request registration. The process is completely online and we'll request your mark within 3-5 days and you will get a filing confirmation.
Registration process in a nutshell
Detailed process explanation:
Filing a mark in the USA requires a lot of preliminary work. Some companies are willing to cut corners, but saving a few days in the beginning will result in months spent preparing responses to objections that could otherwise be avoided.
- Are you using the mark in the USA? If yes, it means that you can take the straightest route to registration by using an "Actual Use" basis for registration.
- If you are not using the mark in the USA there are 2 options: "Foreign Registration" and "Intent to use". Basis for filing: "Actual Use", "Intent to Use" or "Foreign registration" (1. How to choose a basis for filing 2. How to prepare a Specimen of Use that will not be refused)
- Before filing the mark you should clearly describe your products/services in accordance with the rules of the USPTO. Our consultants will help you with this.
- Come up with a trademark name and decide if this is a wordmark, a logo or a combined mark.
- You should perform a basic check before filing a mark, if we spot that your mark is descriptive or generic, we'll inform you of this.
- Once we have a list of products/services, a basis for filing and a name(s) of the owner(s) we are ready to file the mark.
- The mark will be filed within 3-5 days and you will get a filing number.
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).
US Trademark registration: Requirements
- Name of the applicant
- Address of the applicant
- Description of products/services the applicant sells
- Name of the trademark (1. Trademark strength)
- Basis for filing: "Actual Use", "Intent to Use" or "Foreign registration" (1. How to choose a basis for filing 2. How to prepare a Specimen of Use that will not be refused)
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.
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.
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. In our experience, around 25-30% marks get objections, which usually can be overcame. Responding to objection are not included in our regular (basic) price.
The most typical issues which lead to an objection are:
- likelihood of confusion;
- specimen refusal;
- identification and classification issues;
- translation required;
- clarifications required;
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 filing fee is USD 350 per class when using TEAS Reduced Fee (TEAS RF) and USD 250 per class when using TEAS Plus.
This filing option applies to simplified applications using predetermined goods and services. Our listed fee is for a TEAS Plus application with a limited number of goods (up to 10 items per class). We'll help you pick a list of items accepted by the USPTO, this will allow you to avoid objections and get your mark registered faster. For a list including more than 10 items we recommend using a TEAS RF form.
Our US Trademark Protection Services
|1st class||Extra class||Official fee included|
|Filing Request (Plus)||479||419||Yes, 250$ per class|
|Filing Request (RF Form)||579||519||Yes, 350$ per class|
|Trademark Study (wordmark)||89||89||N/A|
|Trademark Study (combined)||159||159||N/A|
|Copyright Registration||499||-||Yes, included|
|Declaration of Use for ITU||369||369||Yes, included|
Contact us for more details.
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