USA Trade Mark Registration

Author: Ian Aldridge, Progressive Legal

Securing a trade mark in the USA is a vital step for international businesses looking to protect their brand and expand their market reach. A USA trade mark registration offers numerous benefits, including global protection, ease of mark availability searches, and enhanced legal rights against infringement.

On this page, we’ll consider the importance of registering a trade mark in the USA, the different types of trade marks you can register, and the detailed registration process. Whether you’re dealing with products or services, understanding USA trade mark registration is crucial for protecting your business interests.

Why should I get a trade mark in the USA?

1. It provides a basis for foreign registrations, facilitating protection of your marks worldwide as business expands;

2. It makes the mark easy to find in a trade mark availability search, which discourages others from using confusingly similar marks, thereby preventing problems before they even begin;

3. It protects against registration of confusingly similar marks, as the US Trade mark Office has a duty to refuse to register confusingly similar marks, thereby helping to prevent infringement at no additional cost to yo;

4. It grants the right to use the ® symbol when the mark is used for the goods and services listed in the registration (unregistered marks may be designated by a superscript “TM”), giving your products more marketing prestige and putting competitors on notice that you are serious about protecting your rights;

5. Once the registration is separately recorded with Customs, this empowers US Customs and Border Protection to block imports that infringe the mark or are counterfeits, at no additional cost to you;

6. It grants the right to sue in federal court and, in certain cases, obtain treble damages and attorney fees, thereby providing for potential significant monetary recovery in appropriate cases.

What types of trade marks can you register in the USA?

Trade marks for products

Generic Mark

Generic trade marks such as ‘The Ice Cream Shop’ cannot be registered as trade marks because anyone has the right to use generic words to describe the products they are selling. Therefore, your generic mark can only qualify for a trade mark if it includes more specific detail such as the qualities or characteristics of the good your business sells.

Descriptive Mark

A descriptive trade mark identifies one or more characteristics of a product or service covered by the mark and only serves to describe the product. e.g. the mark ‘104 KEY’ describes how many keys are on a keyboard; therefore, this could be considered descriptive.

Suggestive Mark

A suggestive mark implies something about the good or service. ‘Suggestive’ means that the customer must use the imagination to figure out what services or goods the company offers e.g. the automotive brand, Jaguar – which suggests speed and agility, but doesn’t immediately convey a car. manufacturer.

Fanciful Mark

A fanciful mark is a term, name, or logo that is different from anything else that exists. This category is the easiest for obtaining trade mark protection e.g. Nike.

Arbitrary Mark

An arbitrary mark might include a term or phrase with a well-known meaning, but the meaning in its case is different e.g. Apple.

Trade marks for companies that offer services

Service Mark

A service mark is the same as a trade mark, but it distinguishes a company that provides services instead of products. A common example of a service mark would be the ‘McDonald’s’ service mark since it is used to represent the services provided.

An additional form of legal protection for distinguishing businesses

Trade Dress

A trade dress includes identifying features of a product or company such as packaging elements, décor items, and other similar concepts. One example of trade dress is the bottle of Listerine mouthwash. The unique flat shape of the bottle is easily identifiable to customers looking for Listerine, so it qualified for protection, which restricts others from producing a confusingly similar bottle design.

What is the trade mark process in the USA?

When it comes to protecting your trade mark in the US, there are two ways to register.

The first is to apply directly to the United States Patent and Trade mark Office (USPTO) and this can be done online.

The second method is to apply using the Madrid Protocol: an international registration system which can also be done online. It offers you the possibility to protect your trade marks in multiple markets by filing one application.

For more information, please refer to these videos on the United States Patent and Trade mark Office (USPTO) website regarding trade mark basics and things you should know before filing.

What is the trade mark process in the USA?

After successfully registering your trade mark in the USA, it’s essential to maintain and protect your rights through ongoing compliance. USPTO requires trade mark owners to submit specific evidence at key intervals to confirm the continued use of the mark in commerce.

5th/6th year requirement

Between the 5th and 6th years after registration, you must file a Declaration of Use under US legislation. This declaration includes evidence showing that your trade mark is still in use in commerce. Failure to file this declaration can result in the cancellation of your trade mark.

9th/10th year requirement

Between the 9th and 10th years, and every ten years thereafter, you must file both a Declaration of Use and an Application for Renewal. This renewal process ensures that your trade mark remains active and protected under US law.

Key takeaways

Registering your trade mark in the USA is a strategic move for any international business, offering extensive protection and numerous benefits. From preventing unauthorised use of similar marks to enabling the use of the prestigious ® symbol, USA trade mark registration is essential for safeguarding your brand.

Additionally, it provides legal rights to sue in federal court and can help block counterfeit imports through US Customs. Understanding the types of trade marks and the registration process is crucial for ensuring your brand’s protection.

Ready to protect your brand in the USA? Progressive Legal can handle your trade mark registration process, protecting your business in the American market. Contact us today to get started.

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