US Trademark Registration Made Easy
Your company has endless opportunities to expand in the global market. While you can take your time preparing for an expansion into the US, there is one thing that you have to do immediately. Register your trademark in the US immediately so that your brand is protected when you expand. T&C*.
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USA Trademark Application: Overview
A trademark, which protects the brand name of a business, can include a word, symbol, logo, or any combination used to distinguish the respective products and/or services from similar ones in the market.
Trademark protection is territorial and exists only within the boundaries of the country in which the trademark has been filed. Entities looking to expand their business internationally must ensure that their trademark is adequately protected in the respective countries where they intend to start their business.
One of the leading economies on the planet, the United States of America has its own federal law and respective state laws pertaining to trademarks and a centralized governing authority called the United States Patent and Trademark Office (USPTO).
Benefits of USA Trademark Registration
USA Trademark Registration Offers The Following Benefits To The Business:
- Exclusive use of the trademark in the United States.
- Ability to prevent others from using a confusingly similar trademark.
- Use of the ® symbol to indicate that the trademark is registered.
- Enhanced ability to enforce the trademark against infringers.
- Easier to transfer or sell the business or trademark.
- Increased brand recognition and goodwill.
- Potential for international registration.
US Trademark Registration Process
Prior to filing a US trademark application, you must check whether the intended mark is available to register. This can be done through online Trademark search in the USTPO database.
USA Trademark Search
The USPTO’s Trademark Electronic Search System (TESS) database displays all the registered trademarks and pending trademark applications at one place. You can do a free online search to find if there are any existing, identical marks that may likely cause confusion to the proposed mark. To understand how this works, it is important to know:
How to Make USA Trademark Search?
The applicants can use any of the three search options, namely Basic word mark search, design mark search and combination of word and design mark search by specifying the “Search term”. All the trademarks related to the specified term will be pulled up at once.
How To Read The Results
When a particular result is clicked the following details will be displayed:
- US trademark Serial number
- Mark type
- Description
- Status – whether pending or active
- Owner’s name, address and entity type
- Prosecution history
- Proceedings, if any
The trademark specialists in AccountWaale will help clients understand the results as well as offer you appropriate advice.
Identification of Class
The USPTO has classified all the goods and services under 45 classes, under which the trademarks have to be registered. These classes are also called as NICE classification (NCL). For example, all musical instruments fall under Class 15; Class 14 contains all precious metals and their alloys, precious stones, etc.
The class has to be identified based on the product or service.
Preparing a US Trademark Application
The trademark application must include the following details:
Applicant’s Details:
The type of business entity – LLP, Private Limted, or LLC, business name and contact details like email address and mobile number.
Format Of Mark:
The intended mark could of three formats:
Standard Character Format:
This format is when the mark consists of words, letters, numbers or combinations without no specific designs and font styles.
Special Character Format:
If the mark contains any stylized words or numbers in particular typeface, colour and styling as in “Google”, “ebay”, “Kellogg’s” then it would be of special character format.
Sound Mark:
Sound marks are for businesses who want to register their jingles and chimes. For example, Intel’s five-note logo.
Specimen of Use
As part of the US trademark registration process, the next step is to provide a specimen of your work, i.e., a drawing of the mark that gives a visual description of how it looks and how well it is connected with the products/services you offer. The specimen must be submitted in supporting documents such as:
Trademark Specification
The intended trademark’s specifications must be carefully drafted to include all the products/services your business offers. It should be as per the acceptable entries of the ID Manual of USPTO, which contains the list of acceptable identification of goods and services. If there is already an accurate description of the products or goods and services, that can be used, else the description has to be given in your own words.
Trademark Filing Basis (SEC. 1A, 1B, 44D, 44E)
As per the Trademark Law, the “filing basis” must include on which basis the trademark or service mark has been filed with the USPTO. It could be one or more basis, depending on the requirement.
The Four Bases Are:
Use in Commerce: This basis is if the mark is being used for trade of goods/services across different states and countries or within one state.
Intent to Use: As the name suggests if you “intend” to use the mark in trade and commerce in the near future, maybe within four to five years, it can be filed on this basis.
Foreign Application basis under Section 44(d): If you are looking to register the foreign application that has already been filed within 6 months.
Foreign Registration basis under Section 44(e): If the mark already has a foreign registration, the relevant information along with the certificate has to be submitted.
US Trademark Application Filing
Step 1: Filing Of Application
Once the application is prepared with all the essential details, it is filed with the USPTO and an official filing receipt along with the serial number is issued. The real-time status of the filed trademark can be tracked at http://tsdr.uspto.gov/ using the serial number.
Step 2: Trademark Examination
Upon filing the application, within the next three months it will be assigned to the Trademark Examiner or Trademark Attorney, who will investigate the application for substantive grounds of objection (similarity with other marks, etc.).
Step 3: Trademark Office Action
If any informality and/or substantive ground of objection is found during the examination, an Office Action notice will be issued. You have 6 months time period to file a reply to the Office Action and remove the respective informality and/or respond to why the substantive ground of objection must be waived.
Step 4: Publication Of Trademark Action
In the event of no informality and/or objection, or once a response to the Office Action has been filed and the same is duly accepted by the Examiner, your trademark application shall be approved for publication in the respective Trademark Official Gazette. The Gazette lists all the newly published marks renewed and cancelled marks. A prior Notice of Publication shall be issued by the USPTO stating the date of the publication of the trademark application.
Step 5: Trademark Opposition Period
Within 30 days from the date of publication of the trademark application in the Trademark Official Gazette, any third party and other trademark owners may oppose that your mark is similar to their brand and/or may cause commercial or economic harm to them. In such a case, they can also file for an extension of time for a period of maximum 180 days for filing an opposition against the trademark, subject to the approval from the USPTO.
In the event an opposition is filed within 30 days or the extended time period, the respective opposition proceedings shall be initiated.
Step 6: Trademark Registration
If no opposition arises during this period, the USPTO shall issue the Registration Certificate for the trademark, provided the application is not filed on Intent to Use Filing Basic (Sec. 1b). For a trademark application filed on Intent to Use basis, the USPTO shall issue a Notice of Allowance.
If no opposition arises during this period, the USPTO shall issue the Registration Certificate for the trademark, provided the application is not filed on Intent to Use Filing Basic (Sec. 1b). For a trademark application filed on Intent to Use basis, the USPTO shall issue a Notice of Allowance.
If no opposition arises during this period, the USPTO shall issue the Registration Certificate for the trademark, provided the application is not filed on Intent to Use Filing Basic (Sec. 1b). For a trademark application filed on Intent to Use basis, the USPTO shall issue a Notice of Allowance.
Validity of a USA Trademark Registration
Trademark registration in the United States is valid for ten years from the registration date. To maintain the registration and keep the trademark valid, the owner must file a trademark renewal application with the United States Patent and Trademark Office (USPTO) between the 9th and 10th year of the registration period.
A registered trademark can be renewed indefinitely for ten years as long as the owner continues using the mark in commerce and files the necessary maintenance documents with the USPTO.
Who can apply for USA trademark Registration?
Anyone can apply for a trademark registration in the United States, regardless of their nationality or residency. However, there are some eligibility requirements that must be met.
- The applicant must have a bona fide intention to use the trademark in commerce.
- The trademark must be distinctive.
- The trademark must not be confusingly similar to another registered trademark.
Eligibility Criteria for US Trademark Registration in India
Indian nationals and businesses can apply for trademark registration in the United States. However, they must have a bona fide intention to use the trademark in commerce in the United States.
The applicant must also appoint a U.S.-registered attorney to represent them in the trademark registration process.
Types of Trademark Registration in the USA
There are two main types of trademark registration in the United States:
- Principal Register: This is the most common type of trademark registration. It provides the strongest legal protection for the trademark.
- Supplemental Register: This type of registration is available for trademarks that are not yet in use in commerce but that the applicant has a bona fide intention to use in the future.
United States Patent and Trademark Office (USPTO)
The United States Patent and Trademark Office (USPTO) is the federal agency responsible for registering trademarks in the United States. The USPTO website has a wealth of information about trademark registration, including forms, fees, and procedures.
The Law governing the USA trademark registration
The Law governing trademark registration in the United States is the Trademark Act of 1946, as amended. The Trademark Act sets forth the requirements for trademark registration, the procedures for registering a trademark, and the rights and remedies that are available to trademark owners.
USA Trademark Classes for Goods and Services
The United States Patent and Trademark Office (USPTO) classifies goods and services into 45 classes. When applying for trademark registration, the applicant must specify the class(es) of goods or services that the trademark will be used for.
U.S. Trademark Registration Cost
The cost of trademark registration in the United States varies depending on the type of registration and the number of classes of goods or services. To know more, get in touch with our expert.
- Trademark Application Form: The applicant must complete and sign the application form. The applicant can be an individual, a partnership, a corporation, or another legal entity.
- Specimen of Use: A specimen of use is required to show that the trademark is used in commerce. This can be a photograph, a copy of a label, or other documentation that shows the trademark being used in connection with the goods or services that it is registered for.
- Drawing of the Trademark: A drawing of the trademark is required. The drawing should be clear and concise, and it should show all of the distinctive features of the trademark.
- Fees: There are filing fees associated with trademark registration. The fees vary depending on the application type and the goods or services classification.
- Power of Attorney: If the applicant is not a U.S. citizen or resident, they must appoint a U.S. attorney to represent them in the trademark registration process. The applicant and the attorney must sign the power of attorney document.
In addition to these documents, the United States Patent and Trademark Office (USPTO) may require additional information, such as a statement of use or a declaration of incontestability.
Non-U.S. citizens and entities can register a trademark in the United States, but they must have a U.S. attorney represent them. The attorney can help with the filing of the application, the payment of fees, and the response to any objections from the USPTO.
What We Do for You?
- Conduct a thorough trademark search to check availability.
- Collect all the necessary information and documents from you.
- Choose the right categories and classes for registering your trademark under.
- Ensure the application is filled correctly and filed properly according to the requirements.
- Once filed we look out for any questions from the USPTO and watch the Trademark Official Gazette, to see if it has been approved.
- Always keep you informed throughout the process.
- Get you your certificate of trademark registration.
Pre-Requisites for Assignment of Trademark
There are a few pre-requisites that must be met before a trademark can be assigned. These include:
- The trademark must be registered with the relevant trademark office.
- The trademark must be in use.
- The assignment must be in writing and signed by the owner of the trademark.
- The assignment must be recorded with the relevant trademark office.
Who can Assign a Trademark?
The owner of a trademark can assign it to another person or entity. The owner can also assign part of the trademark, such as the right to use the trademark in a specific geographic area.
Restrictions on Assignment of Trademark
There are a few restrictions on the assignment of a trademark. These include:
- The assignment cannot be made if it would violate the rights of a third party.
- The assignment cannot be made if it would be contrary to public policy.
- The assignment cannot be made if it would be fraudulent.
How to Assign a Trademark
To assign a trademark, the following steps must be taken:
- The parties to the assignment must agree on the terms of the assignment.
- The assignment must be in writing and signed by both parties.
- The assignment must be recorded with the relevant trademark office.
The assignment agreement should include the following information:
- The names and addresses of the parties to the assignment
- The trademark that is being assigned
- The terms of the assignment, such as the consideration being paid for the assignment
- The date of the assignment
The assignment agreement should be recorded with the relevant trademark office. This will ensure that the assignment is enforceable against third parties.
Why AccountsWaale for US Trademark Registration Process?
AccountsWaale is India’s largest professional platform of lawyers, chartered accountants, and company secretaries-with years of experience behind. We execute legal work for over 1000 companies and LLPs every month, by leveraging our tech capabilities, and the expertise of our team of legal professionals.
9.1 Customer Score
We make your interaction with the government as smooth as possible by doing all the paperwork for you. We will also give you absolute clarity on the process to set realistic expectations.
300-Strong Team
With a team of over 300 experienced business advisors and legal professionals, you are just a phone call away from the best in legal services.
Access to Experts
We provide access to reliable professionals and coordinate with them to fulfil all your legal requirements. You can also track the progress on our online platform, at all times.
Realistic Expectations
By handling all the paperwork, we ensure a seamless interactive process with the government. We provide clarity on the incorporation process to set realistic expectations.
Who can Assign a Trademark?
The owner of a trademark can assign it to another person or entity. The owner can also assign part of the trademark, such as the right to use the trademark in a specific geographic area.
The owner of a trademark can be an individual, a company, or another legal entity.
Types of trademark assignment
There are two main types of trademark assignment:
- Assignment of all rights: Transfers all the owner’s rights in the trademark to the assignee.
- Assignment of limited rights: Transfers specific rights in the trademark, such as geographic usage or product/service association, to the assignee.
What are the Restrictions on Assignment of a Trademark?
There are a few restrictions on the assignment of a trademark. These restrictions include:
- The assignment cannot be made if it would violate the rights of a third party.
- The assignment cannot be made if it would be contrary to public policy.
- The assignment cannot be made if it would be fraudulent.
Penalties for Non-Compliance with a Trademark Registration
The penalties for non-compliance with a trademark registration vary depending on the jurisdiction. In India, the penalties can include:
- A fine of up to INR 100,000 (about US$1,300).
- Imprisonment for up to six months.
- A combination of fine and imprisonment.
FAQs on Trademark USA
The cost of trademark registration in the United States varies depending on the type of registration and the number of classes of goods or services. The basic filing fee for a trademark registration on the Principal Register is $375 per class. However, there are additional fees for things like publication, examination, and registration. Here is a breakdown of the fees for trademark registration in the United States:
- Basic filing fee: $375 per class
- Publication fee: $100 per class
- Examination fee: $225 per class
- Registration fee: $375 per class
**Note: Cost may vary subject to the registration/filing
In addition to the basic filing fee, there are other fees associated with trademark registration in the United States. These fees include:
- Publication fee: This fee is charged when the trademark application is published for opposition.
- Examination fee: This fee is charged when the trademark application is examined by the USPTO.
- Registration fee: This fee is charged when the trademark application is registered.
The fees for trademark registration in the United States can be paid by credit card, debit card, wire transfer, or check.
Not all trademarks are eligible for registration in the United States. The following types of trademarks cannot be registered:
- Generic terms: These are terms that are commonly used to describe the goods or services in question. For example, the term coffee cannot be registered as a trademark for coffee.
- Descriptive terms: These are terms that describe the qualities or characteristics of the goods or services in question. For example, the term fresh cannot be registered as a trademark for fruits or vegetables.
- Deceptive terms: These are terms that are likely to mislead consumers about the nature, quality, or origin of the goods or services in question. For example, the term all natural cannot be registered as a trademark for a product that contains artificial ingredients.
- Marks that are confusingly similar to another registered trademark: The USPTO will not register a trademark that is confusingly similar to another trademark that is already registered.
- Marks that are immoral, deceptive, or scandalous: The USPTO will not register a trademark that is immoral, deceptive, or scandalous.
The time it takes to get a trademark registration approval in the United States varies depending on a number of factors, such as the complexity of the application and the workload of the USPTO. However, the average processing time is 12-18 months.
Trademark registration in the United States is valid for ten years. The registration can be renewed indefinitely for additional 10-year periods as long as the trademark is still being used in commerce and the owner files the necessary renewal documents with the USPTO.
Trademark registration in the United States is valid for ten years. The registration can be renewed indefinitely for additional 10-year periods as long as the trademark is still being used in commerce and the owner files the necessary renewal documents with the USPTO.
It is possible to register a trademark in the United States yourself. However, it is important to note that the trademark registration process can be complex and time-consuming. If you are not familiar with the process, it is advisable to hire an attorney to help you. An attorney can help you:
- Choose a strong trademark that is likely to be registered.
- File the trademark application correctly.
- Respond to any objections from the USPTO.
- Protect your trademark from infringement.
If you are considering registering a trademark in the United States, it is important to weigh the pros and cons of doing it yourself versus hiring an attorney. If you are not sure whether you are comfortable with the process, it is always best to consult with an attorney.
No, trademark, copyright and patent are the different types of Intellectual Property Rights. A trademark protects the brand name of a business, which can be in the form of a word, logo, tagline, etc. Copyright protect the original work of an author and Patent protects an invention.
No, a company/business registration name is the corporate name of an entity that is duly incorporated in the respective State. For instance, Apple Inc. is the company name and “Apple” is the registered trademark of Apple Inc.
Once a trademark application is filed, the USPTO issues a Serial Number, using which the real-time status and documents can be viewed on Trademark Status & Document Retrieval (TSDR) at the following link- http://tsdr.uspto.gov/.
Besides the informalities found in the trademark application, the Examiner may also issue an Office Action based on grounds of similarity between marks and/or on grounds of descriptive of the trademark. An objection on grounds of Similarity of marks indicate that the Examiner has found your trademark to be confusingly similar (phonetic, visual, structural similarity) to one or more trademarks that already exists and are listed on the USPTO Trademark Database. Objection on grounds of descriptive of the mark indicate that the trademark applied for is not distinctive enough, or lacks distinctiveness.