How to protect a Trademark in the United States : a comprehensive guide to US Trademark registration

Filing a trademark in the United States has several specificities, particularly regarding the importance of use. From filing to registration procedures, from evidence of use to renewal, this provide a comprehensive overview of trademark protection in the United States.

Filing a Trademark in the USA

Key principles

A prior art search is essential beforehand, as with any trademark filing.

The first step is then to determine the type of trademark you wish to protect: a word mark, a figurative mark with its description and possible colors, etc.

Additionally, you choose with your counsel the goods and services to be protected. Given the obligation to submit evidence of use, a precise definition of covered goods and services is required.

Bases for US Trademark filing

Then, you specify the basis for filing: the U.S. trademark system is based on use, rather than on filing as in French law (“first to use” vs “first to file”).

Several bases are available for a US trademark application:

• “Use in commerce”: Your trademark is already being used for various goods and services outside the federal state. You must provide a specimen of use, as well as the date of first use in commerce.
• “Intent to use”: The trademark is not yet in use but you undertake to use it in the coming years. You benefit from renewable 6-month periods, for a total period of up to 3 years following the examination of the trademark.
• Based on a foreign filing: Section 66(a) of the Lanham Act requires ownership of a French trademark or European Union trademark, for example.

It is also common to request an international extension application via the Madrid Protocol. This treaty offers the possibility to designate multiple countries through a single international registration administrated by WIPO (World Intellectual Property Organization). It is the simplest way to obtain protection while limiting trademark registration procedures and associated costs.

You may also claim priority over the US filing by claiming a priority date. To do this, your US application must be filed within 6 months of the initial filing.

Examination of a Trademark in the United States

The first data point concerns the examination schedule. The US office currently examines registration applications 9 months after their filing!

The examination covers the filed trademark, as well as the goods and services covered. Note that in case of extension of a French or European trademark, the same goods and services must be designated. However, the USPTO may assess the wording of the goods and services differently from its European counterparts.

Several grounds for provisional rejection are possible:

• Required amendment of the identification of goods and services
• Lack of distinctiveness of the trademark
• Likelihood of confusion with a prior trademark, etc.

In all cases, representation by a US attorney is essential when a rejection, request for clarification, or opposition is issued. Our law firm has a network of trustworthy international partners.

It should be noted that an alternative exists for refused trademarks: the Supplemental Register rather thanthe Principal Register. The owner benefits from more limited protection but can use the ® symbol and oppose the registration of other trademarks. Furthermore, the trademark may acquire distinctiveness through use over time.

Finally, the US Office may request a disclaimer: you agree not to claim a exclusive rights over one of the terms forming the denomination and deemed descriptive.

US Trademark opposition procedure

Once the trademark filing is accepted by the US Office, it is published. For thirty days, anyone who belives they would be harmed by the registration of your US trademark can file an opposition.

Caution: the opposition procedure is more complex and costly than in France! US civil procedure rules apply (requests for sworn testimony, discovery of opposing party’s documents, etc.). Fortunately, the USPTO’s preliminary work limits opposition cases, which are ten times less frequent than in France.

Trademark use in the United States

Use in commerce is at the heart of trademark protection in the United States. Between the 5th and 6th year after filing, the owner must file a declaration of use or excusable non-use while paying applicable fees.

This declaration must include precise, localized, and dated evidence of use. This can take the form of a catalog excerpt, an online sales website, or packaging.

If you do not file this declaration, your registration will be cancelled.

A false declaration exposes you to cancellation of your trademark for bad faith filing as well as sanctions under US criminal law for perjury.

Then, a similar declaration of use will be necessary during the year preceding the renewal date (10 years).

US law grants exclusive rights on the condition of continuous trademark use. The American view may differ from French and European analyses. Assistance from an experienced law firm ensures a comprehensive vision and optimal management of a trademark portfolio.

Stéphane Bellec, Partner

Intellectual Property Attorney

Email: sbellec@debaecque-avocats.com

Tel: +33 (0) 1 53 29 90 00