Registering a trademark in the United States of America

 

There are two ways to protect your trademark in the United States:

• the filing of a US Trademark Application;
• the designation of the United States through the international trademark registration.

Which kind of trademarks it is possible to file in US

Shall be registered as mark any word, name, symbol, device or any combination. The owner of the trademark may be an individual, corporation, partnership, LLC, or other type of legal entity.

United States of America adopt Nice Classification. On these basis, you can choose in which classes you can protect your trademark.

Trademark filing and registration of a trademark in US

Before filing the trademark application, it is important to have clear in mind whether the application must be based on actual and existing use of the mark in the United States or if there is a bona fide intention to use the mark in the future. In the latter, within six months after the Notice of Allowance it will be necessary to file the “Statement of Use” (the use of the mark in the United States, therefore, must be started and be demonstrable).

In order to avoid the abandonment of the application,  it is also possible to file a request of extension of time (of six months) for the filing of the Statement of Use. A total of five extension requests may be filed.

After the filing, the Examining Attorney makes a complete review of the mark, including a search for earlier conflicting marks. If the Examiner finds some obstacles to the registration, an office action is issued. It is possible to reply to the office action within 6 months or the application will be declared abandoned.

In case the examining attorney issues a final refusal, the applicant may appeal to the Trademark Trial and Appeal Board (TTAB).

In the event no office action is issued by the Examining Attorney, or in case you have overcome the refusal, trademark application will be published in the Official Gazzette.

Third parties will have 30 days from the publication date to file an opposition to the registration or a request to extend the time to oppose.

Validity and duration of a trademark in US: Declaration of Use

In order to keep the registration of the trademark alive, it is necessary to timely file some documents. Some of them between the fifth and sixth year from the registration date, some of them between ninth and tenth year. Let’s see together:

Declaration of Continued Use for registered trademarks in US

In the United States it is necessary to file a sworn “Declaration of Continued use”, between the fifth and sixth year from the registration date, in which it is stated the mark is used in the United States. The declaration must be filed to the US Trademark Office and it is mandatory in order to keep the trademark alive; the purpose of the Declaration is to remove marks no longer in use from the register. The “Declaration of Continued Use” will be accepted if filed within six months after the deadline with the payment of an additional fee.

In the “Declaration of Continued Use” it is stated that goods (or services) listed in the Certificate of Registration are actually used in the United States: it is possible to delete goods /services for which trademark is not used.

With the “Declaration of Continued Use” some specimens per class of goods/service claimed in the registration must be filed. Examples of acceptable specimens for the USPTO are labels for goods and advertisements for services.

Declaration of Excusable nonuse of registered trademarks in US

US Law takes into consideration the possibility of an “excusable nonuse”: there exists a “Declaration of Excusable nonuse”, which is a sworn statement that the mark is not used in commerce due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark. Such declaration must include, inter alia, the date of the last use of the mark in commerce as well as the approximate date when use in commerce is expected to resume and details concerning the reasons for nonuse.

Nonuse due to the decreased demand for products does not by itself constitute “excusable nonuse”.

Declaration of Incontestability for registered trademarks in US

US Law states, moreover, the possibility of filing a “Declaration of Incontestability” (not mandatory, but only optional): it is a sworn declaration, filed by the owner of a mark registered in the Principal Register, claiming the incontestability * of his trademark rights for goods/services specified in the declaration.

The “Declaraiotn of Incontestability” cannot be filed if it is not possible to demonstrate that trademark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration and is still in use in commerce.

Declaration of Incontestability must include, inter alia, the declaration that there has been no final decision adverse to the owner’s claim of ownership of the mark for the goods/services, or to the owners’ right to register the mark and that there are not proceeding involving the trademark rights pending in the USPTO or in a court of law.

* When a trademark becomes incontestable some arguments of attack are precluded for third parties: for instance, third parties lose the possibility to state that the mark is merely descriptive of goods and services claimed by the same. At the same time, t is necessary to bear in mind that the mark is not totally incontestable since it remains contestable for some reasons (among these, for example, if abandoned for nonuse, if it has become generic term for the goods claimed or if the declaration of the incontestable right to use the mark was obtained by fraud).

Other Declarations: Declaration of Use and application for renewal

Between the ninth and tenth year from the registration date, and every ten years thereafter, it will be necessary to file a combined “Declaration of Use and Application for renewal”.

Trademark registration is subject to cancellation in the event of non-use for three consecutive years.

 

Eva Troiani law firm is at your disposal for further information on how to register your trademark in the United States of America.