How do I get a U.S. trademark?
How do I get a U.S. trademark?
So you have or are thinking of expanding your business into the U.S. and want to know if registering your trademark in the States is the best move forward.
In short – absolutely! In the U.S. trademark rights are built up based on USE, so the earlier and more consistently you use your trademark, the better. And registering your trademark provides additional benefits that cannot be reaped by use of your trademark alone. Some of these benefits include incontestability, the automatic right to sue in federal court, the ability to recover money in infringement suits, the right to use the registered trademark symbol, obtaining help from U.S. Customs against counterfeit goods, the fact that it may deter others from using your trademark, and that it may assist in stopping cyber squatters from taking your trademark for a domain name.
Search – A trademark search is the best first step forward in your registration quest. It will provide you with vital information about any other prior registered or pending marks out there that may be a risk to your application. You can then make an informed decision going forward. This may be especially useful to those who are just starting up and exploring what brand names to use. A search may help you determine which name to use or whether you should rebrand due to a conflicting mark at this early stage, saving you time and money in the long run.
Application – The next step would be to apply for trademark registration. Every application must have a “filing basis”. The 4 most common are:
1(a) – IN USE. This means your mark is already in use in the U.S. and you can provide a specimen (proof of use) of the same.
1(b) – INTENT TO USE. This means you have not yet begun using your mark, but you intend to in the near future. Please keep in mind that your mark will not register until you can show proof of use.
44(d) – This filing basis would be available to you if you are a foreign applicant and you have filed an application for the same mark in your country of origin in the last 6 months. When the application in your home country registers, so too would the U.S. mark – without having to declare or show proof of USE in the U.S.
44(e) – This filing basis would be available to you if you are a foreign applicant and you have a registration for the same mark in your country of origin. Your mark in the U.S. would register without having to declare or show proof of USE in the U.S.
Examination – When your mark is filed, the examining attorney may issue an Office Action that would address any issues with your application, such as specification clarifications or if there is a prior conflicting mark.
Publication – Once all issues have been satisfied, your mark would be published for a period of 30 days during which time any third party who feels they may be damaged by your trademark may oppose your mark. An opposition is similar to a federal trial, but out of court. If no one opposes your mark during publication, your mark would then register if filed on a 1(a) or 44(e) basis. If filed on a 1(b) basis, you would be issued with a Notice of Allowance. You would then have 36 months from this date to begin using your mark in the U.S. and show proof of use of the same. If you filed on a 44(d) basis, your mark would register when your foreign application registers.
Registration – And that’s it! Your mark is federally registered and you could then begin using the R symbol. In order to maintain your registration, you would have to file certain documents at different intervals following registration. We would guide you through this process when the time comes, of course. In the meantime, enjoy all the benefits U.S. federal trademark registration offers!