US Trademark Registration Q&A

Who is eligible to register a trademark in the United States?

• Any natural person or entity that uses a trademark or has a bona fide intention to use a trademark may apply for registration.

What is protectable as a trademark in the United States?

• In the United States, except for certain special cases, any distinctive and non-functional word, symbol, picture or combination thereof can be registered as a trademark, service mark, certification mark or collective mark by the USPTO ; it can also be protected under common law without registration. Certain product shapes, packaging, slogans, colors, sounds, movements, fragrances and other non-visual materials can also be protected and registered.

Can trademark rights be established without registration?

• Yes. Unregistered but otherwise valid marks (also known as common law marks) are protectable under section 43(a) of the Lanham Act. The territorial scope of unregistered mark rights is generally limited to the area where the mark is used or known to consumers. Unlike registered marks, unregistered marks are not presumed to be valid. To protect an unregistered mark, the rights holder must prove the validity of the mark.

Are foreign well-known trademarks protected even if they are not used domestically? If so, must the foreign trademark be a domestic well-known trademark? What proof is required? What protection is provided?

• Well-known marks enjoy broader protection than non-well-known marks, but U.S. law generally does not protect well-known or famous marks that are not used in the United States.

What documents are required to submit a trademark application?

• In the United States, all trademark registration applications must be submitted electronically, and paper applications are no longer accepted. Applicants do not need to conduct pre-application searches. Each trademark registration application requires the following information:
  • Applicant's name, address, entity type, and email address
  • Signature or certification of the applicant
  • Product or service mark
  • Application Basis
  • Trademark Design
  • Product Description
  • Pay the application fee
• If the applicant files a trademark application based on commercial use, the trademark application must also include:
  • Verified declaration of commercial use of the trademark
  • Date of first use
  • Date of first commercial use
  • Samples showing the mark in use in U.S. commerce for at least one good or service in each class. Samples showing the mark in use on a website must include the URL and the date it was accessed or printed.
• If the applicant files an application based on a bona fide intent to use the mark in U.S. commerce, the application must include:
  • A verified statement
  • An application claiming priority from a foreign application under the Paris Convention must specify the country of priority and its priority date.
  • Verify the applicant’s bona fide intent to use the mark in U.S. commerce
  • Applications for registration under the Madrid Protocol must comply with requirements set by the World Intellectual Property Organization, including filing Form MM 18 , a Declaration of Intent to Use the Mark, and a verified statement confirming the applicant’s bona fide intent to use the mark in U.S. commerce.
    

How long does it generally take to obtain a trademark registration and how much does it typically cost?

• If no substantive issues arise during the USPTO review, a U.S. trademark registration can obtain a trademark registration certificate within 12 months from the date of application. The fee for registration through TEAS is $275 per class, and the applicant needs to submit a complete trademark registration application; the description of goods and services uses the standard language of the USPTO Identification Manual; pay the trademark registration application fee; submit the application electronically; the trademark registration officially takes effect when the trademark registration certificate is issued; but many rights can be traced back to the time when the trademark registration application was submitted.

What classification system does the USPTO follow? Is it possible to apply for multiple classes? What is the estimated cost savings?

• USPTO adopts the Nice International Classification System. It accepts multiple-class applications. Multiple-class applications will not be eligible for fee reductions.

What procedures does the Trademark Office follow when deciding whether to approve a registration?

• The USPTO examining attorney will review whether the mark meets the requirements for registrability and whether there is any conflict with other marks involved in the registration or application.
• The USPTO will consider an agreement between the parties that explains why the marks are unlikely to cause confusion and what the parties will do if confusion does occur. A written agreement between the parties is not sufficient.
• The examiner will issue an examination opinion notice on the trademark registration application and stipulate a three-month extendable response period or a six-month non-extendable response period.
• The applicant needs to respond to the review opinion. If the defects pointed out in the review opinion are not serious, the examiner will contact the applicant by phone or email.
  

Must the use of a trademark or service mark be claimed before registration is approved or issued?

• The United States is a member of the Paris Convention, and Section 44 of the Lanham Act allows the registration of trademarks that have been applied for or registered in the country of origin of a convention member country. Generally speaking, prior ownership of foreign trademark registrations cannot offset the rejection of a trademark registration application in the United States or support enforcement actions for infringing use.

Which words or symbols can be used to indicate the use or registration of a trademark?

• All trademark owners may use the ™ symbol to assert their rights, regardless of whether their trademark is registered or has pending applications.
• The ® symbol may only be used for registered trademarks.
• It is strongly recommended that products be labeled to provide notice of rights and to ensure proper use of the trademark to avoid infringement of trademark rights.
• A registrant’s failure to use the ® symbol may reduce the monetary relief available in an enforcement action.

What is the US trademark opposition process? Can a brand owner oppose a bad faith application in a jurisdiction where its trademark is not protected? What are the typical costs associated with third-party opposition or cancellation proceedings?

• Yes. In the United States, any party who believes that they would be harmed by a trademark registration may file an opposition to a trademark registration application. Grounds for opposition include:
  • Failure to meet registrability requirements
  • The distinctiveness of the plaintiff’s famous trademark may be diluted
• Once a trademark enters the preliminary announcement procedure, anyone has 30 days to file an objection or request an extension of the objection period. Without the applicant's consent, the period can be extended by up to 90 days, and with consent it can be extended by another 60 days.
• U.S. trademark law sets a timeline for discovery, cross-examination, and filing briefs. This standard timeline provides for a final briefing deadline of 550 days after the notice of opposition is issued. The TTAB typically decides the case within eight months of the filing of the brief. The parties may agree to an expedited timeline for case resolution. A party that loses an opposition may appeal to the U.S. Court of Appeals for the Federal Circuit or to a federal district court with jurisdiction over the party. The notice requirements and deadlines for filing an appeal are set out in the U.S. Manual of Trademark Examination Procedure. Parties may generally appeal within 60 days of the decision. If a party appeals to the Federal Circuit, the party that does not appeal may choose to review the decision through civil litigation in the federal district court within 20 days.
• A registered trademark may be cancelled at any time due to abandonment by the right holder. The opponent must prove that the registered trademark has ceased to be used and that there is no intention to resume use. Non-use for three consecutive years constitutes prima facie evidence of abandonment. The procedure for cancellation due to abandonment is the same as for cancellation due to other reasons.
• If the trademark registration has not reached the fifth anniversary, the trademark can be cancelled for the following reasons:
  • Any reasons that could have prevented the registration of the trademark
  • Continued registration of a trademark may weaken the distinctiveness of the prior user's famous trademark
• If the registration is older than five years, the grounds for cancellation are narrowed down to the following:
  • the registration was obtained or maintained fraudulently;
  • Registered Trademarks:
  • It has become a generic trademark;
  • Functional trademarks;
  • or abandoned (not used)
• As of the registration date, the registered trademarks are:
  • Deceptive
  • Falsely implies an affiliation with a person, organization, belief, or national symbol
  • Contains the flag, coat of arms, or other emblem of the United States, any state, city, or foreign country or contains the name, likeness, or signature that identifies a specific living individual (unless consent is obtained) or the name, signature, or likeness of a deceased President of the United States during the lifetime of his or her surviving spouse (unless written consent is obtained)
  • or a registered trademark is used to misrepresent the origin of the goods or services sold under it
• If the mark has been registered for three years but has never been used in commerce (although a registered proprietor based on a foreign application may be able to prove excusable non-use as a defence)
• or in the case of a certification mark, the registered mark has been used as a trademark or service mark
• Any party who believes that they have been harmed by a trademark registration may file a trademark cancellation action with the TTAB by filing a cancellation petition and required fees. The cancellation petition must be filed electronically and signed by the applicant or the applicant’s attorney.
• The application must include:
  • A brief, clear statement of why the applicant believes that he is or would be harmed by the registration;
  • Reason for cancellation
• U.S. law also authorizes two types of ex parte proceedings to challenge a registration for non-use of a registered mark.
  • The first, Ex Parte Reexamination, allows a challenge to a registration in which the owner claimed during the application process that the mark was in use in commerce. This mechanism allows the USPTO to re-examine the accuracy of the registrant's use statement. This mechanism is not available once the registration exceeds the fifth anniversary.
  • The second type: unilateral revocation, allows oppositions to trademark registrations that have never been used in commerce. It is primarily aimed at registrations based on non-US registrations. The challenger can only use the trademark between 3-10 years from registration.
• Anyone may initiate trademark cancellation proceedings unilaterally. A party may file a petition anonymously with the USPTO, submitting evidence or testimony that establishes a prima facie case that the mark was not in use in commerce as of the relevant date, namely:
  • The date on which a statement of use was filed in support of a use-based application (or the deadline for filing such a statement)
  • and registrations based on non-U.S. registrations have not been used for three years
• The USPTO may also confirm non-use of a trademark based on the evidence provided.
• The trademark registrant can overturn the evidence of non-use of the trademark for 3 years by submitting contrary evidence and testimony. If it is a non-US registration, the trademark owner can prove the non-use with legitimate reasons. If the USPTO considers that the registrant's response is insufficient, the trademark will be removed from the registration and the applicant has the right to appeal to the TTAB. But if the response is sufficient, it will have an exclusive effect, prohibiting any further unilateral challenge to the registration for the goods or services targeted by the first challenge.

How long is a U.S. trademark registration valid for, and what are the conditions required to maintain the registration?

• Registrations can be maintained indefinitely if the owner files the proper maintenance and renewal documentation. The owner must file a statement of use and a specimen of the mark showing current use of the mark in U.S. commerce between the 5th and 6th year after the registration date. If the owner files a statement of use and a specimen showing current use of the mark in commerce, the registration can be renewed 10 years before the registration date and every 10 years thereafter.

What is the procedure for relinquishing trademark rights?

• In general, in the United States, trademark cancellation proceedings can be initiated in whole or in part by electronic filing, and no filing fee is required. However, if a post-maintenance application alleging that a registered mark is in use is selected for review, a fee will be required to remove specific goods and services that are not in use. If a trademark cancellation proceeding is conducted by the TTAB, the USPTO will be responsible for handling it in the post-registration department. If the abandoned mark is the subject of a cancellation proceeding, the abandonment proceeding will be handled by the TTAB.