Navigating the Complexities of US Trademark Registration

The 'Use' Requirement in US Trademark Law

The United States Patent and Trademark Office (USPTO) enforces a policy that places significant emphasis on the 'use' of a trademark in commerce. This stands in contrast to the UK Intellectual Property Office (IPO) and the European Union Intellectual Property Office (EUIPO), which have different criteria for registration. Non-US applicants must be well-informed of this divergence prior to filing a trademark application in the US.

Filing a 'Use Application'

When a trademark is already being used in the US, applicants must file a 'Use Application.' This includes a declaration of the mark's use in commerce, the date of first use anywhere in the world, and the date of first use in the US. A specimen showing the mark in use must accompany the application. These additional steps can make the US application process more demanding compared to other jurisdictions.

Filing an 'Intent to Use' Application

For trademarks not yet in use in the US, an 'Intent to Use' application is necessary. This requires a declaration of a bona fide intent to use the mark. The USPTO mandates that the mark be in use before it will grant registration, and there are two critical periods during which applicants must demonstrate use:

Window 1: Pre-Approval for Publication

An Allegation of Use form must be filed before the mark is approved for publication in the Official Gazette, along with a specimen and a fee of $100 per class.

Window 2: Post-Notice of Allowance

After receiving the Notice of Allowance, if the mark is in use, a Statement of Use form must be filed within six months, along with the required fees. If the mark is not yet in use, applicants can request an Extension of Time to File a Statement of Use, granting an additional six months. This extension can be renewed every six months for up to a total of 36 months.

The pressure to avoid continual extensions incentivizes applicants to commence use of the trademark promptly. However, it is advisable to apply for trademark protection before actual use to preempt competitors and secure rights in the market.

The Madrid Protocol Advantage

An alternative to direct US trademark filing is the Madrid Protocol, an international system allowing for trademark protection in multiple countries through a single application. For a UK applicant, this can be more desirable and cost-effective, especially when seeking protection in several countries. While the USPTO's classification system is stringent, Madrid Protocol applications often benefit from broader classifications.

Maintenance of US Trademarks

Once a trademark is registered in the US, foreign applicants must be vigilant about maintenance requirements. A Declaration of Use must be filed before the end of the sixth year of registration. Businesses with extensive trademark portfolios must carefully monitor deadlines to maintain their registrations and prevent challenges from third parties.

Concluding Thoughts

The US market, with its unique procedural demands, can be challenging for overseas applicants. As a critical market for international business, securing professional expertise is essential to navigate the US trademark registration process and ensure robust brand protection.

For more detailed information on the US trademark registration process, visit the USPTO's official website. To understand the benefits of the Madrid Protocol, you can refer to the World Intellectual Property Organization (WIPO).