According to the World Intellectual Property Organization, over 2 million trademark applications were filed in the US in 2021, making it one of the most active jurisdictions worldwide for trademark registration. Protecting a brand through trademark registration is essential in the USA, as it provides exclusive rights to the owner and serves as a crucial asset for businesses.
This article will guide you through the US trademark registration process, including the requirements, the search process, and the application procedure.
1. What can be registered as a trademark in the US?
What is a trademark? The trademark definition is as follows: It is a word, phrase, symbol, design, or a combination of these elements that is used to identify and distinguish the goods or services of one person or company from those of others.
The mark must also be distinctive and not merely descriptive of the goods or services. Additionally, the mark must not be confusingly similar to a mark already in use by another party.
You can register the following types of trademarks in the US:
- word marks;
- color marks;
- 3D marks;
- combined marks;
- service marks;
- collective marks;
- certification marks;
- sound marks;
- scent marks;
- flavor marks;
In the United States, it is crucial to accurately classify the goods and services associated with your trademark according to the International Classification of Goods and Services. This ensures that your application adheres to international standards and offers sufficient protection for your brand.
Furthermore, you can file a multi-class trademark application in the US. This allows you to register a single trademark for multiple related trademark classes of goods or services, but you must pay an extra fee for each additional class.
2. Why can you be refused to register a trademark in the US?
Trademark registration in the US may be refused based on absolute and relative grounds. Absolute grounds involve objective criteria and may reject marks that are prohibited, scandalous, offensive, or likely to prejudice national interests or security. Relative grounds, on the other hand, assess the possibility of confusion with existing marks.
Absolute grounds for refusal include situations in which the trademark:
- includes immoral, deceptive, or scandalous content, or content that could offend or bring into contempt persons, institutions, beliefs, or national symbols;
- contains a geographical indication that identifies a location other than the origin of the wine or spirit;
- is purely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods or services, or is primarily merely a surname;
- consists of functional matter.
- it is too similar to a previously registered mark in the USPTO;
- a similar mark or trade name was previously used in the US and has not been abandoned,
- it may cause confusion or deceive people when used on or in connection with the goods of the applicant.
3. The process of trademark registration in the US
Before filing a trademark application, it is essential to conduct a trademark search to ensure that another business does not already use the proposed trademark. The USPTO provides an online database, the Trademark Electronic Search System (TESS), which you can use to conduct a preliminary search. You can also convey a more comprehensive search via a trademark attorney or a professional search firm.
The next step is to prepare and file a trademark application with the USPTO. The application should include a description of the goods or services for which you are seeking trademark protection and a specimen showing the mark in use. You can file a trademark application on various bases, such as Use-in-commerce, Intent-to-use, or as a Foreign application.
After the USPTO receives your application, it will be assigned to an examining attorney who will review the application to determine whether it meets the requirements for registration. The examining attorney will also conduct a search to ensure that the proposed trademark does not conflict with any existing marks. If the examining attorney identifies any issues with the application, they will issue an Office Action outlining the problems that need to be addressed. The applicant has six months to respond and address the issues outlined in the action.
If the trademark application is approved, it will be published in the USPTO’s Official Gazette, a weekly publication that lists all trademarks that have been approved for registration. Once the mark is published, anyone who believes it may conflict with their existing trademark has 30 days to file an opposition.
If no opposition is filed, or if it is resolved in favor of the applicant, the mark will be registered and a registration certificate will be issued. The registration is effective from the application date so long as the application is ultimately approved. The term of a registered trademark is 10 years, after which you can apply for renewal.
4. Documents required for trademark registration in the USA
The applicant may be any person or entity capable of suing and being sued in a court of law. There can only be one applicant.
An application must contain at least the following:
- name of the applicant;
- address for correspondence;
- clear drawing of the mark;
- list of the goods and/or services;
- a verified statement of a bona fide intention to use a mark in commerce (for the intent-to-use application);
- a certified copy of the Priority Document (for the foreign application basis);
- filing fee for at least one class of goods or services.
Trademark documents must be filed only electronically using the appropriate form.
In the Trademark Electronic Application System (TEAS), there is one initial application form with two filing options: TEAS Plus and TEAS Standard.
- $250 per class of goods/services;
- pay all filing fees with your initial application;
- you must select your goods or services listing from the Trademark Identification (ID) Manual;
- a U.S.-licensed attorney must complete and submit your initial application;
- you should provide all required additional statements in your initial application.
- $350 per class of goods/services;
- pay one application filing fee with your initial application and the rest later in the process;
- you can write the description of your goods and services, but it’s still essential to accurately describe your goods and services;
- you can complete and submit your initial application, but you must designate a US-licensed attorney after that;
- you can provide required additional statements after you submit your initial application.
5. Trademark opposition process in the US
After a trademark application is published for opposition, any party who believes the trademark registration may harm them has 30 days to file an opposition with the Trademark Trial and Appeal Board (TTAB). The party filing the opposition is known as the opposer, while the applicant is known as the respondent.
The respondent then has a set time to file an answer to the opposition.
After the initial pleadings have been filed, the parties engage in a period of discovery, during which they may request documents and other information from each other, take depositions, and engage in other forms of pre-trial fact-finding.
If the case is not resolved through summary judgment, a trial is held before the TTAB. Both sides present their evidence and argument to the TTAB during the trial. The TTAB then issues a decision on whether the trademark can be registered.
If the opposition is successful, the trademark application will be refused, and the applicant may need to change their trademark or abandon their application. If the opposition is unsuccessful, the trademark will be registered.
6. Costs of trademark registration in the US
Government fees of trademark registration in the US:
|TEAS Standard, per class
|TEAS Plus, per class
|Failing to meet TEAS Plus requirements, per class
|Amendment to alleged use, per class
|Statement of use, per class
|Request for a six-month extension for filing an SOU, per class
|Extension of time for filing a response to a pre-registration office action
|Petition and letter of protest fees
|Petition to the Director
|Petition to revive an application
|Letter of protest
|Petition for expungement and reexamination, per class
|Extension of time for filing a response to an office action
|Post registration fees
|Registration renewal application, per class
|Registration renewal application grace period, per class
|Correcting a deficiency in a renewal application
|Declaration filed between the 5 and 6 years (§8), per class
|Declaration §8 grace period, per class
|Correcting a deficiency in a declaration §8
|Combined §8 and §15 declarations, per class
|§15 declaration, per class
|Combined §8 and §15 declarations filed during grace period, per class
|Combined §8 declaration and §9 renewals, per class
|Combined §8 declaration and §9 renewals both filed during grace period, per class
|Deleting goods/services/classes from registration, after filing, per class
|Trial and Appeal Board (TTAB)
|TTAB petition for cancellation, per class
|TTAB notice of opposition, per class
|TTAB ex parte appeal, per class
|TTAB first 90-day or second 60-day request for extension of time to file a notice of opposition
|TTAB final 60-day request for extension of time to file a notice of opposition
|Certified copy of registration, with title and/or status, regular service
|Certified copy of registration, with title and/or status, expedited local service
|Certified copy of domestic application as filed
|Certified or uncertified copy of application/registration file
|Recording trademark assignment, agreement or other ownership document
The trademark registration cost in the United States via the iPNOTE platform starts from as low as $500, which includes all government fees as well as document preparation. Find the best trademark agent in the US on iPNOTE.
Trademark registration in the US is a complex and important process that requires careful attention to detail and adherence to multiple legal requirements. Hiring a licensed trademark lawyer can help ensure that your registration is successful and that your brand is adequately protected.
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