USA trade mark registration

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:

• Apply directly to the United States Patent and Trade mark Office (USPTO): this can be done online;
• 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

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.