PROTECTING MY TRADEMARK IN THE UNITED STATES
How can I register my trademark in the U.S.?
The U.S. provides a federal trademark registration registry. Each of the 50 states and the territory of Puerto Rico provide their own registration registries as well. A federal registration takes priority over a state or territorial registration and provides substantial additional benefits. Based on cost and relative benefit we generally recommend a federal registration for our clients except in very rare circumstances.
How much does it cost to obtain a federal trademark registration in the U.S.?
The costs associated with obtaining a federal trademark registration are government fees, search fees and legal fees. The U.S. Patent & Trademark Office normally charges $325 for one trademark application in one class of goods/services. The U.S. Patent & Trademark Office charges additional fees for a variety of events such as the request of an extension of time. Search fees can vary based on the nature of the search. All of these fees, including our firm’s legal fees, can be found on our registration fee sheet available on request.
How long does it take to obtain a federal trademark registration in the U.S.?
The amount of time varies from year-to-year, but in 2007, a federal trademark registration could be obtained from 12 to 18 months, absent a problem. If problems arise with the application process, then a registration can take longer.
What are the steps in the application process?
Once the application is filed with the U.S. Patent & Trademark Office, it will be assigned to a trademark examiner within two to three months. The examiner will review the application to make sure it is compliant with examination procedure guidelines and will compare the identified trademark against other pending applications and registered trademarks. If the examiner has a concern, he or she will issue an “office action,” rejecting the application or asking for some clarification or change. If the examiner has no concerns, he or she will approve it for “publication.” The trademark will then be published in a federal publication so that anyone from the public at large may have an opportunity to object if they believe the proposed trademark registration is problematic or harmful to them. Such a person, subject to certain requirements, may then file an “opposition” stating grounds why the registration should not be granted. If no opposition is filed within the publication period, then the application is ready for issuance of a registration certificate. For an application that is based upon trademark use, the application proceeds to the issuance of a registration certificate. For “intent to use” applications (see below), a “notice of allowance” is issued, giving the applicant six (6) months to demonstrate use in commerce. Extensions of time can be filed if use is not completed in six (6) months for additional terms.
Do I have to wait until my trademark is registered to use it in commerce?
No. You can begin using your trademark immediately, even before you file your application for registration. However, because the U.S. is a “first-to-use” country (see below), we recommend that you conduct a trademark search first in order to determine that there are no prior applicants, registrants or users.
Can I obtain a federal registration without using the trademark in the U.S.?
Unless you are applying for trademark registration based on a foreign registration, you can file an application but will not obtain a registration until you provide proof use in commerce.
What is an “intent to use” application?
An “intent to use” application is one which is not based on a foreign registration and which an applicant files before using a mark in commerce. The purpose of the “intent to use” application is to provide prior rights against subsequent users and applicants on the basis that the applicant intends to use the mark in commerce in the near future. An intent to use application can be kept pending through extensions for approximately 3 years before it will lapse for non-use.
What is a trademark search?
A trademark search is a search to determine whether there are prior applicants, registrants or users of a given trademark or of confusingly similar trademarks. You can conduct a search by using Internet search engines such a Google or by reviewing trade resources within your chosen industry. This type of search, while helpful, is very limited because it does not adequately capture pending trademark applications and existing registrations. Also, this type of search may ignore similar marks in related classes. Our firm can conduct an “in-house” search. An in-house search involves a review of the federal trademark registry as well as the registry of the 50 States for pending applications and existing registrations. Although this search is not fool proof and there is no guaranty that a confusingly similar mark will not be missed, it constitutes an important additional step in determining the availability of the mark. A “full trademark search” is one that is done by an outside company dedicated to conducting such searches. A full trademark search is substantially more expensive than an in-house search, and, while still not perfect, is far more accurate and includes applications, registered trademarks and unregistered trademarks. We always recommend that our clients conduct a full trademark search. It is important to note that regardless of which search you conduct, the results are never guaranteed and there is always a risk that a trademark will be overlooked in the process of searching.
If I register my trademark mark first do I have superior rights to all other users?
No. The United States, like most of the English speaking countries in the world, is a “first to use” country. This means that the first person to use a trademark in commerce has superior rights to the trademark in his region of use. In some cases, a prior user would be able to seek cancellation of a trademark registration granted to a subsequent user.
If a prior user has superior rights in the U.S. then why register a trademark?
A federal trademark registration has certain inherent and substantial benefits. It prevents junior users who began using the trademark in other regions prior to the application for registration from expanding their right to use the trademark beyond the geographic area and channels of trade in which they affected commerce. It also serves as notice that no one can begin using the mark anywhere in the U.S. and its territories after the date that the application was filed for registration. After five years, the registration becomes incontestable and therefore more difficult to challenge or defeat. The registration also entitles the trademark owner to certain statutory causes of action under federal law as well as to enhanced damages. Finally, the registration entitles the trademark owner to record its trademark with the U.S. Customs and Border Protection service in order to prevent the importation of counterfeit goods as well as, in some circumstances, parallel market goods.
What is an “office action”?
An office action is a document sent to you or your attorney by the trademark examiner asking for clarification of your application or rejecting your application. After a response is filed by the applicant, the trademark examiner will either approve the application to proceed to the next stage or will issue a final office action.
What do I do if the trademark examiner rejects my application?
If the trademark examiner rejects your application, you can appeal to the Trademark Trial and Appeal Board.
What is an opposition?
An opposition is a proceeding initiated by a third party during the publication portion of the application process to prevent the issuance of a trademark registration. An opposition is a formalized mini-trial with limited discovery and written submissions.
What is a cancellation proceeding?
A cancellation proceeding is like an opposition, but is filed against an already registered mark.
Can my trademark registration or application be challenged in court?
Yes. Someone seeking to challenge your application or registration can do so by filing a court action instead of an opposition or cancellation proceeding. Usually, court actions are filed when the trademark is already in use in commerce and the third party intends to seek injunctive relief.
Does my U.S. registration grant me protection in other countries?
Generally, no. Trademark rights are generally national in nature and do not extend outside of the U.S. A U.S. registration can, however, be used to obtain certain priority rights in obtaining a registration in another country, if the application for foreign registration is filed within certain deadlines.
What is a counterfeit trademark?
A counterfeit trademark is a spurious copy of another person’s trademark which is applied to a product in a manner intended to confuse the consumer into believing that it is the genuine trademark, without the permission and quality control of the genuine trademark owner. A product bearing a counterfeit trademark is often called a counterfeit product.
What are a parallel market goods?
Parallel market goods also known as gray or grey market goods or a diverted goods, are genuine products purchased from the trademark owner or its distributor which are then resold outside of the authorized channels of trade. Absent a material difference in a foreign sold version of the genuine product, parallel market goods are generally legal in the U.S. and are often sold at a discount for the consumer. Manufacturers of electronic products will often not honor warranties for parallel market goods.
Why record my trademark registration with Customs and Border Protection?
When you record your trademark registration with Customs and Border Protection (“CBP”) your trademark will be added to a list and CBP will monitor the border for products bearing your trademark. If counterfeit product is detected by Customs it will be seized, and, after providing you notice regarding the importer, the product will be destroyed. If you own the trademark registration and nowhere else in the world, you can also qualify for parallel market protection and the mark will become “restricted.” Customs will then also stop the importation of genuine product which has left the country and is being imported without your permission.