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USA Trademark Registration 

 
Attorneys - USA
 
Welcome:

My name is Jeff Furr and I'm the representative Attorney in the USA.

I'll be personally in charge of your trademark registration process.
 
   
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Your trademark registration will be processed in the USA through the following steps:

 
Trademark Comprehensive Study   Step 1. Trademark Comprehensive Study:
A trademark search report with attorney's analysis and opinion about registration probabilities.
Step 1 Prices
 

 
Trademark Registration Request   Step 2. Trademark Registration Request:
A trademark attorney will file and process your trademark application before the Trademark Office.
Step 2 Prices
 

Frequently Asked Questions
  • Is there a time frame for the trademark registration approval?

    The average time frame for the registration approval is 10 months, if no objections or oppositions arise.

     

  • Is it necessary to use my trademark before I apply for registration?

    It is required that you are either actually using the mark or you have intention to use the trademark in the future. Once your trademark is accepted for registration, the Trademark Office will request that you provide proof of use of the trademark, in that moment you will need to be using your trademark for obtaining your registration. 

  • What are the requirements for an acceptable specimen or proof of use?

    A specimen or proof of use is a sample of your trademark as used in commerce. It is real-life evidence of how you are actually using your trademark in the marketplace, with the goods or services included in its description.

    The USPTO requirements for proofs of use are:

    • Be a real example of how you use your trademark in commerce in providing your goods or services (not a mock up, printer’s proof, digitally altered image, rendering of intended packaging, or draft of a website that shows how your mark might appear). For example, specimens against a solid color background, which may indicate that they were digitally created, can be rejected.
    • Show your trademark used with the goods or services listed in your application.
    • Depict the same trademark as shown on your drawing.
    • Show your use of your trademark (not use by someone else, such as press releases sent exclusively to news media).
    • Be an appropriate type of specimen based on whether you have goods or services. For example, advertising material is an acceptable specimen for services, but not for goods.
    • Show your trademark used in a way that directly associates the mark with the goods or services.
    • Show your trademark used in a way that consumers would perceive it as a source indicator for the good or services in your application (it functions as a trademark).
    • Include the URL and date you accessed or printed the webpage in your submission.

    Some proof of use examples for goods are a photograph, scanned copy, screen capture, or printout of:

    • The goods themselves, showing your mark.
    • Labels and tags for the goods, showing the mark, with informational matter that typically appears on a label in use in commerce for those types of goods, such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information about the goods.
    • Packaging for the goods, showing the mark.
    • Sales displays where the goods are sold, showing the mark.
    • Webpages selling the goods, showing the mark on or in close proximity to the goods, the price, and a shopping-cart button. In your screenshot or printout, you must include the URL and date you accessed or printed the webpage.
    • For software as goods, a screenshot of the software launch screen showing the mark or a screenshot of a webpage with enough information to download the software and the mark appearing in the title bar.

    Some proof of use examples for services are:

    • Online advertising or printed matter showing a direct link association between your trademark and the services.
    • Television and radio commercials for the services.
    • Marketing material showing a direct association between your trademark and the services (brochures or leaflets advertising your service).
    • Signage where the services are rendered.
    • Material used in the providing/rendering of the services.
    • Invoices showing a direct association between your trademark and the services.
    • Business cards and letterhead showing a direct association between your trademark and the services.

    To see images of some of these examples of acceptable proofs of use, visit the USPTO’s webpage “Specimens”.

    It is important to review  the requirements and examples since the USPTO is becoming stricter when it comes to the proofs of use. 

    Examiners may visit the websites from which the specimens have been obtained to verify that goods and services are real and currently available to the American consumer.

  • Do I need a Power of Attorney?

    No, you don't need to provide a Power of Attorney for registering your trademark in United States. 

  • How many applications should I file?

    The answer to this question depends on the characteristics of your mark, your budget and the scope of protection that you would like to have in the United States.

    If your trademark contains distinctive verbal elements (text) as well as design elements (graphics or logos) and you wish both to be protected,  it is recommended to file two trademark applications; one to protect just the verbal elements (the application will be filed as “Word Mark”) and another to protect just the design elements (the application will be filed as “Combined Mark”).

    In this case, proceeding with two trademark applications has the following advantages:

    1. Broader and stronger protection. If a third party files a “Combined Mark” with very similar text to yours but different design, their “Combined Mark” could be accepted for registration if you only filed a “Combined Mark” and not a “Word Mark,” because in its entirety the third party’s mark is still considered different from yours.
    2. You will be protected if your logo evolves. It is common for companies to change the design of their logo with time. If you file a “Combined Mark” and not a “Word Mark,” your new logo will not be protected. You must use your trademark exactly as registered; if you don’t, your trademark may be subject to cancellation.
    3. Effective verbal and graphics protection. Filing a “Word Mark” application provides greater flexibility to use your mark in different ways, whether it is presenting it in stylized text or presenting it with different designs (as long as they are not too similar to registered trademarks that belong to third parties). At the same time, filing a “Combined Mark” allows you to protect the design elements of your mark.

    If your trademark also contains a slogan or a distinctive design symbol, a specific application should be filed for each, as this will give you additional protection.

  • What are the types of trademark that can be registered in United States?

    Signs that help consumers distinguish a product/service from others and marks that are graphically reproducible can be registered. Examples are: 

    • Words
    • Names
    • Colors
    • Taste
    • Sounds
    • Devices
    • Slogans
    • Scents
    • Trade dress
    • Three-dimensional shapes
  • When filing a logo or combined mark application in the USA, should I claim color?

    The following factors must be taken into consideration when deciding whether or not to claim color in a logo application: the scope of protection you desire and the importance of the specific color(s) in terms of the image of your brand.

    If no color claim is made, your logo is submitted in black and white and it is presumed to cover all colors. The benefits of not claiming color include a greater scope of protection of the shape of your mark and the flexibility of being able to use your logo in different color schemes, while still maintaining the protection. This option is advisable if the specific color(s) of your logo are not vital for the brand image.

    On the other hand, if the colors of your logo are fundamental, and your customers recognize your brand because you use particular colors, it may be more suitable to claim the colors of your logo as a feature of the mark.  Claiming color implies a more limited scope of protection to the specific colors you claim, but it entails a higher degree of protection over the color itself (similar marks have a lower probability of co-existing if they are in the same colors). If you choose to claim color, your application must describe where each color appears in the mark.  Black, white or gray can be used as claimed features of the mark or to indicate areas that are not part of the mark, such as background, transparent areas, shading, etc.

    For ideal protection, as some big companies do, it would be advisable to file two applications: one black and white logo without claiming color to better protect the shape of your mark, and one color logo with color claim to assure a protection of the mark with the particular colors you use.

    If you have doubts as to whether or not you should claim color, contact us at info@marcaria.com.

  • When is it required to inform the translation and transliteration of a trademark in the USA?

    An application to register a mark that comprises non-English wording must include an English translation of that wording. This requirement also applies to trademarks comprised of two or more distinct words that are represented as one word, in which one or more of the words in the mark appears to be non-English wording that would clearly be perceived as a distinct word(s) within the compound. A satisfactory translation must be some normal English expression that will be the equivalent in meaning of the term in the other language. For example, the English equivalent of the phrase "mais oui" in French is "why, certainly," or "why, of course,", and not the literal translation "but yes."

    If the trademark also includes non-Latin characters, a transliteration of those characters must be included along with the translation. A transliteration is the phonetic spelling, in corresponding Latin characters, of the word(s) in the mark that are in non-Latin characters. For example, the transliteration of the Chinese character “文” is “Wen” and it means “culture, writing” in English.

    If you have doubts as to whether or not you should claim color, contact us at info@marcaria.com.

  • What type of trademark is non-registrable?

    You cannot register marks that contradict the American standards of moral, marks that can cause public disorder, terms that are generic in nature, name of states, flags of nations, emblems of international organization, marks that does not demonstrate distinct characteristics, surnames, and geographical and location names.

  • Are there any benefits from using a trademark before registering it?

    Yes. Using unregistered marks for goods/services is approved by the law. In U.S., the first to use a mark or the first to file for registration, whichever is earlier, is the authorized and legal owner of the trademark. More so, common law rights are acquired through use of a mark. Notice thought that some products that are related to cigarettes and drugs are regulated before they are made available in the market.

  • Are there any rights established by having a registered trademark?

    Yes. When you register a trademark in the United States, you will establish these rights: 

    • Use the trademark exclusively
    • Sue third parties for infringing the registered mark
    • Request for confiscation of fake goods
  • If I register my trademark in United States, do I have protection in other territories?

    Registered trademarks in the United States are protected in its entire geographical scope including territories such as Puerto Rico, Virgin Islands, Northern Mariana Islands, Guam and American Samoa.

  • Does the United States use the "Nice Classification" system?

    The United States uses the Nice Classification System in terms of class number; however, they use their own identification system of goods and services to determine the class description. The difference between the Nice Classification identification of goods and services and the US identification of goods and services is that the US requires the items to be broken out to describe the goods/services in more detail. For example, “clothing” must be broken down to “shirts, pants, skirts, etc." If you order a Comprehensive Study in the USA, within the study our attorney will recommend the description that should be included in the trademark registration request.

  • Is it possible to claim priority in United States?

    Yes. If the first application was filed in a country that is a member of the Paris Convention, and it was filed within 6 months from the US filing date, it is possible to claim priority.

  • Do I need to present periodic statement of use?

    Yes. The owner of the registered trademark must file a document declaring that the mark is continually used for commerce or trade. This declaration must be filed sometime between the 5th and 6th year after the date of registration. Failure to comply will result to cancelled registration.

  • What do I need to do to satisfy the use requirement?

    Use your trademark within 3 years from the date it was officially registered. It is mandatory to engage the mark on trade or commercial transactions and it must occur within the jurisdiction of the United States.

  • Will there be problems in case I don’t use my trademark after registration?

    Yes. Non-use is a common ground for cancellation of registration.

  • What are application oppositions and objections?

    Your business name is an asset to you and your company. Even after you successfully register your trademark, you still must defend it from legitimate competition, counterfeiters, and unfair business practices that infringe on your property rights. On a regular biweekly basis, the US Patent and Trademark Office (USPTO) releases a list of approved trademark applications for public review. A trademark is not self-enforcing. Part of owning a commercial mark is proactively protecting it. Every two weeks, the public and competing business owners in your chosen commercial market, can file an opposition to an approved trademark. Professional services have the resources and time to watch this constant churn of new information and help you defend your mark in a busy world. See more information about our Trademark Watch Service.

    If a mark owner believes your mark infringes on their exclusive rights to property, they will oppose your application during this period and file an opposition with the Trademark Trial and Appeal Board. You must defend your brand and the trademark that shows you own it. 

    During the examination process leading to the registration of a trademark, a Trademark Office compares your mark to other existing trademarks and will reject the application if the mark resembles marks already in the marketplace.

  • How do I defend a trademark opposition?

    When a US Patent and Trademark Office(USPTO) examining attorney has reviewed and approved your trademark application, they release your request for the mark to the public. This step begins a thirty-day period within which anyone can oppose the registration of your mark. This public listing appears in the Original Gazette which is available online.

    You have thirty days as the applicant of a trademark registration application to respond to a Notice of Opposition. When you respond to your opposer’s claims, the Trademark Trial and Appeal Board(TTAB) will schedule a legal proceeding, like a mini-trial, to hear both sides of the complaint.

    We recommend you hire a professional trademark service or a trademark attorney to build a legal defense, file proper court documents, and respond to any court motions. The TTAB has legal requirements and strict deadlines for any responses to a Notice of Opposition.

    The USPTO sends you a Notice of Default if you do not respond to a Notice of Opposition and the TTAB will rule for the opposer. This judgment binds you from any future applications for the trademark under review. You can sometimes file a motion to lift a default ruling.     

  • How do I oppose a trademark application?

    A US Patent and Trademark Office (USPTO) examining attorney will publish a mark after the application examination period. The Tax Authority releases this information in the USPTO’s online Original Gazette. The public has thirty days to oppose a trademark application to stop registration. If you have a personal or business interest and can show the proposed trademark will affect you or infringes on your existing mark or property rights, you can stop the registration process. The opposition process further guarantees that commercial marks in use are authentic, distinct, and limit consumer confusion in buying brand names. 

    In addition to claims about the likelihood of confusion, you can oppose a trademark application for many reasons like:

    • The mark is generic and therefore not distinct
    • The mark is descriptive in either physical or geographic terms rather than unique
    • The mark raises social concerns
    • The mark is misleading
    • The mark potential dilutes another mark

    If you want to oppose the registration of a trademark, you must file a notice of opposition with the USPTO as the opposer. The document must explain why the USPTO should not register this mark. The trademark applicant has another thirty days to respond to your opposition claim. The Trademark Trial and Appeal Board (TTAB) sets a calendar date for the proceedings. We recommend you to hire a trademark attorney to file a Notice of Opposition, because trademark opposition hearings are legal proceedings.

  • Once my trademark has been registered, for how many years will be valid?

    The trademark will be valid for 10 years starting on the date of initial registration.

  • What will be the renewal date of my trademark?

    The renewal date is computed 10 years from the date the registration was granted.


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