US Trademarks: Rules of practice in brief
When you file for your brand logo or name to be registered with a US Trademark, you are protecting your brand from trademark infringements in the United States and all United States territories under Trademark Act of 1946, 60 stat. 427, as amended, codified in 15 U.S.C. 1051 et. Seq.
Before filing a US Trademark, there are many pieces of information and evidence you must collect to prove your brand is active or intends to be active. You may file as an individual, but it is heavily advised to go through an attorney. The US trademarks office will not choose an attorney for you.
- You need to provide your full name, address, and citizenship, and if you are a legal entity, provide the registered address, country of incorporation, and status of the legal entity.
- You then have to correctly classify the international goods and/or services you are planning on filing. There is a fee per class. If the mark is already in use, you need to provide proof of use of that mark so far and the dates in which the mark started to be in use. Proof can be in the form of a website, business cards, products using the mark etc.
- When filing a mark with colour or a form, it is important to clearly state and include this colour and describe where these colours appear on the mark, and any features.
- If you use non standard characters, you need to provide a description of the mark.
- An official translation of any wording that is not in English needs to be provided.
- If the mark includes non-latin characters, a transliteration of those characters, which is then translated into English, needs to be provided. If the transliteration cannot be transalted into English, then a statement needs to be provided that states that.
- You must claim ownership of all registrations and registration numbers for multiple marks e.g. if you have already filed and received trademark protection in your home country, you must provide proof of that during the filing process.
- The application must include a verified statement that meets all requirements as provided for on the site.
- If you allege that you are already using the mark, the statement must say: “That the applicant believes it is the owner of the mark; that the mark is in use in commerce; that to the best of the declarant’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of the other person, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services; and that the facts set forth in the application are true.”
- If you allege that you have an intention to use the mark, the statement must say: “That the applicant has a bona fide intention touse the mark shown in the accompanying drawing in commerce on or in connection with the specified goods or services; that the applicant believes it is entitled to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of the other person, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.”
- It is important to note that all documents filed in the US trademark office by the applicant or applicants representative become part of the official record and cannot be returned or removed.
Once all information is provided, an examiner will review the application. An applicant will be notified, if found not entitled for registration. Most times, further information will be required and a 6 month period is provided.
Once the information is provided, there will be reexamination. If there is refusal again, but the examiner does not state that it is final, there can be further reexamination. If it is stated that it is final, you can request reconsideration only within a specific period.
Whenever an application made for registration resembles another mark or marks, the mark will the earliest effective filing date will be published in the Official Gazette for opposition.
Amendments to applications
Some parts of an application can be amended during the course of examination but not to broaden or limit the identification of good and services.
When a trademark is registered, you will be provided with a certificate and registration number. While waiting for a trademark you can use the sign TM once you are registered you can change to R.
It is important to get advice when filing a Trademark. An intellectual property lawyer of our Firm can provide you with information and assistance.