TRADEMARKS FILING AND PROSECUTION IN UNITED STATES (USA)
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers identify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of a registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, registration is not required. The owner of a common law trademark may also file suit, but an unregistered mark may be protectable i.e. enforceable in State Courts but to enforce the rights in relation to the mark to a greater extent in Federal Courts, it must be registered with the U.S. Patent and Trademark Office USPTO.
Trademarks in United States may be designated by the following symbols:
- ™ (for an unregistered trademark, but for which application has been filed)
- ® (for a registered trademark)
|Relevant Office||United States Patent and Trademark Office (USPTO)|
|Nice Classification||Nice classification, 11th edition (With some Local Exceptions)|
|Multi- Class System||Yes|
|Documents required for filing a trade mark application||The basis of filingSample of the mark or the packaging to be usedCertified copy if priority is to be claimed|
|Prosecution Process||Application filedUSPTO reviews applicationUSPTO approves trademark and publishes it for oppositionIssuance of Notice of Allowance & Filing of Statement of Use (in case application has been filed on proposed to be used basis)Issuance of Registration Certificate|
|Registration Term||10 years from the date of registration|
|Renewal Term||10 years from the date of previous registration|
Trademark Searches in USA
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in United States can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of USPTO, United States through use of the Trademark Electronic Search System, or TESS. This online tool also is coupled with a tutorial segment on how to use it. It however disclaims that the search is only a part of the clearance search as their database may not contain all trademarks.
Trademark word search edition of United States follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45. Trademark searches in United States can be conducted for the desired class and associated classes.
It is advisable to conduct comprehensive trademark clearance search in United States to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in United States. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in United States can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing Trademark Application in USA
A person may file a multi-class or single class trademark applications in the United States.
Trademark Application can be filed be filed in the following categories:
- Ordinary Applications
- Convention Application (claiming priority from a convention country)
Ordinary Trademark Applications In United States:
Ordinary trademark applications filed in United States are applications without claiming any priority. Ordinarily a trademark application is requested to be filed online (mandatory electronic filing) by the USPTO. Multi class trademark applications may also be filed in United States. However, the Trademarks Act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country (i.e. as per the Paris convention or if filed under the Madrid Protocol).
Priority Trademark Applications in United States / Convention Trademark Applications United States:
A priority trademark application may be filed in United States. The applicant can submit the priority claim after the filing date of the U.S. application, as long as the claim of priority is submitted within six months of the foreign filing and the claimed priority date is earlier than the filing date of the U.S. application.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in United States within six months of after the date on which the application was made in the Convention Countries.
The United States was one of the very first members of the Paris Convention and have been signatory to it since May 30, 1887.
Trademark Classes for Goods and Services
As per § 30 (15 U.S.C. § 1112) of The Lanham Act, under TITLE IV Classification: the classification adopted by the USPTO in terms of goods and services is provided along with provision of registration in plurality of classes.
In the United States, any National Trademark protection is facilitated by the federal law in force since 1946 referred to as “The Lanham Act”. The Act extends to all the fifty U.S. states as well as any territory under United States jurisdiction and control.
However individual states in the United States also have their own trademark laws but their registration serves the purposes of providing a notice to third parties of local rights and such rights have minute substantive value and could be broadly considered as “common law” rights. Although, unregistered use of a trademark, known as common law use, may prevent a few conflicting rights in the geographic area of use to arise.
In United States a trademark application can be filed in 45 classes: Classes 1 to 34 for goods and classes 35 to 45 is for service marks.
For more information on Trademark in United States please write to us at: firstname.lastname@example.org
How to protect a trademark in USA (United States)?
Remedies available for trademark protection in USA are:
Civil Action– The competent Federal Courts can be moved for grant of relief of injunction and monetary reliefs against infringement and/or passing off. On instances where willful infringement has occurred, the owner may be able to obtain the profits made by the infringer in use of the mark.
Administrative Remedies– Notice of opposition can be filed against trademark applications published in the Official Gazette in United States. Proceedings can be initiated for rectification/cancellation of registered trademarks before the USPTO.
Border Measures– Under the United States law, Customs and Border Protection (CBP) provides for an authority that inspects any custom goods that enters the country.
CBP officers seize and/ or detain goods that are suspected of using a counterfeit trademark under the definition provided under the Lanham Act. A notice to the trademark owner is given inviting him for inspecting the seized goods.
Trademark Registration and Renewal USA
For more information on trademark protection in USA, you may write to us at: email@example.com
WELL-KNOWN AND FAMOUS TRADEMARKS IN USA
The United States (USA) under Lanham Act, Sections 43 and 44, incorporates and implements the standards laid down by the Paris Convention and the TRIPS Agreement for well-known/ famous mark by protecting registered as well as unregistered well-known marks, having both domestic and foreign origin, against any use and/or registration by unauthorized third parties. 
What is not registrable as a trademark in United States?
The trademarks which are not registrable in United States are the following:
- immoral or scandalous matter;
- deceptive matter;
- matter that may disparage, falsely suggest a connection or bring contempt or disrepute;
- any flag, coat of arms or other insignia of the United States, any state or municipality or foreign nation;
- matter protected by statute or convention (eg, the Red Cross or the Olympics);
- the name, portrait or signature of a living individual or deceased US president, without consent;
- generic, merely descriptive or deceptively misdescriptive terms;
- geographically descriptive or misdescriptive terms; and
- names that are primarily merely surnames.
For more information on well-known trademarks in USA, you may write to us at: firstname.lastname@example.org
TRADEMARK REGISTRATION AND RENEWAL IN USA
How to register a trademark in USA?
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant (in case of application filed on claiming use basis) or upon acceptance of Statement of Use filed with USPTO (in case of application filed on proposed to be used basis). The mark is then registered for a period of 10 years from the date of filing of the registration and the registration certificate is issued.
How to renew a Trademark in USA?
A trademark can be renewed in United States from time to time for an unlimited period upon payment of the renewal fees, failing which the mark becomes liable to be removed from the Register on account of non-renewal. Each renewal term is for a period of 10 years.
Section 8 Declaration + Section 9 Renewal – Within one year before the end of every 10-year period after the registration date, or within six months of the end of the 10-year period, the Applicant must file a Combined Declaration of Use or Excusable Non-use/Application for Renewal under Sections 8 and 9 and pay applicable fees. This declaration generally must include a verified statement that the trademark is in use in commerce, along with evidence showing that use, and the renewal is a statement requesting that the USPTO renew your registration. In case the Applicant does not file this combined declaration, the registration will be canceled and expire.
For more information on trademark registration and renewal in USA, you may write to us at: email@example.com
TRADEMARK ASSIGNMENT IN USA- PROCEDURE AND REQUIREMENTS
The Lanham Act, 1946 provides for trademark assignment in USA cunder Section 10. The provision states that “A registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.”
Assignments shall be by instruments in writing duly executed. Acknowledgment shall be prima facie evidence of the execution of an assignment, and when the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office, the record shall be prima facie evidence of execution.
A non-resident assignee or an assignee not domiciled in the U.S. must designate a person domiciled in the U.S. for the purpose of receiving notices served in relation to the assignment. The documents required for filing assignment is duly executed Deed of Assignment
TRADEMARK OPPOSITION PROCEDURE IN USA
An opposition against a trademark application in the USA (United States of America) can be filed as under [§ 13 (15 U.S.C. § 1063)]
- For trademark opposition in USA Once a trademark application is published in the Official Gazette, any person can file a notice of opposition on relevant grounds (Absolute grounds; non-compliance of formal requests; Abandonment of mark; Fraud; Dilution), alongwith fee within the prescribed period of 30 days (extendable up to 30 days and maximum up to 180 days) before the Trademark Trial and Appeal Board (TTAB) of the USPTO. If no opposition is filed within the prescribed period, the application proceeds for registration.
- If a notice of opposition is filed, the Board issues an institution order and the same is duly served upon the applicant and the applicant is required to file an answer within the prescribed period of 40 days (extendable upon request). If no response is filed, a Notice of Default is issued and the applicant is required to show cause for the same, failing which the application is abandoned.
- Afterwards, the parties are required to enter a Discovery Conference within 30 days, wherein the parties discuss their respective claims and evidences and subsequently are required to file their respective evidences within the prescribed period of 30 days and 15 days for the opponent to file a rebuttal to the applicant’s evidence.
- Once the pleadings are complete, the matter proceeds ahead for hearing with the TTAB, which can be reconsidered upon request of any party within 30 days. An appeal against the decision of the TTAB may be filed by any party in the Court of Appeals for the Federal Circuit or request a new trial before the U.S. District Court within the prescribed period of 2 months.
 Trademark Oppositions in the United States of America; https://ipo.org/wp-content/uploads/2015/02/Trademark-Oppositions-in-the-United-State_CKrechevsky_Final_As-Published-by-ECTA_052714.pdf; April 02, 2020
 Ibid ; Trademark Opposition Proceedings in the United States (PDF); https://www.wipo.int/export/sites/www/sct/en/comments/pdf/sct17/us_1.pdf; accessed on January 18, 2021