Generally, a trademark is a word, phrase, symbol or design, or a combination of those elements, which identifies and distinguishes the source of the goods or services of one undertaking from another.
U.S. federal trademark registration offers several advantages, for example it is a public notification to others of your claim of ownership of the mark. It also gives a legal presumption of ownership of the mark and exclusive right to use the mark throughout the States on or in connection with the goods/services registered for. A federally registered mark also offers the right to bring an action related to the mark in a court of federal jurisdiction.
One advantage when you have a registered U.S. mark is that you can record the registration with the U.S. Customs and Border Protection (CBP) Service to prevent anyone from importing foreign goods which infringe your mark.
Once your mark is registered, you are also entitled to use the federal registration symbol ® you're your mark is publicly listed in the United States Patent and Trademark Office’s online database.
A U.S. trademark application must declare a "basis" for filing. The two most common filing basis’ are “in use” and “intent to use”.
In use: This applies if you have already used your mark in commerce. Upon declaring use, you must provide the date of first use of the mark anywhere in the world and the date of first use of the mark in commerce, as well as submitting a real world example (“specimen”) demonstrating your actual use of the mark in the U.S.
Based upon a foreign application: This is a filing basis our client’s often qualify for. It applies if you have a pending application or registered trademark for the same mark in your “country of origin”. One advantage of this filing basis is that it prevents the need, at the outset, from having to submit evidence of use.
After your mark has been filed and examined, provided there are no refusals to your application, it will proceed to publication for a period of 30 days during which time any third party who feels they may be damaged by your mark can file an opposition against your mark.
If your mark was filed on an “in use” basis or based on a foreign application/registration, you will then be issued with a registration certificate which is valid for a period of 10 years.
To maintain your federal trademark registration, a section 8 Declaration of Continued Use must be filed between the 5th and 6th years after the registration date along with payment of the appropriate fee. A section 8 Declaration of Continued Use and an Application for Renewal must be filed between the 9th and 10th years after the registration.
To keep you mark, you must also renew your trademark registration by filing an Application for Renewal under section 9 of the Trademark Act in conjunction with a section 8 Declaration.
If you have any more questions about trademark registration please see our FAQs or call us free on 0800 862 0370
Privacy Policy
