Introduction
A trademark is a distinctive sign that identifies certain goods or services as those produced or provided by a specific person or enterprise. It may be one word or a combination of words, letters and numbers. A trademark provides distinctiveness and prevents unauthorised use of a product,, which is a necessity in today’s dynamic landscape.
Classification of Trademark Registration in USA
1. Product Mark: A mark used to identify the source of a product and to distinguish a manufacturer’s goods from others.
e.g., Cadbury, Coco Cola
2. Certification Mark: A certification mark represents a sign indicating that the goods/ services certified by the owner of the sign in terms of origin, material, quality, accuracy or other characteristics.
e.g., AGMARK, ISI
3. Service Mark: It identifies and differentiates the source of service.
e.g., Amazon, Master Card
4. Collective Mark: These trademarks are used by a group of companies and also protected by the group collectively. The owner of such marks are normally an association or public institution or a cooperative society.
e.g., Reliance Industries, Tata
In the United States, trademarks serve as a vital component of intellectual property law, offering legal security for businesses and individuals alike.
Benefits of a Trademark Registration in USA
A strong trademark serves as an invaluable asset to the business. It helps in growing the customer base by uniquely identifying the product and protecting it against infringement. Initially the registration process may require a substantial amount of time and expense, but the benefits which it serves are exemplary.
Some benefits of US registration are –
International Recognition: A trademark registration in the US paves the way for global recognition of a brand, as the market is huge and keeps evolving. Also, a trademark registration in the US is valid for all 50 US states.
Protects against infringement: It helps in gaining legal recognition of brands across the US, which in turn provides a firm ground for taking legal action in cases of international infringement.
Serves as a ladder for international trademarks: A trademark in the US builds goodwill, which in turn paves the way for the filing of international trademarks.
It helps in alerting the public by using a SM or TM
Registration of a Trademark in USA
The registration of a trademark in the US is governed by the Lanham Act, popularly known as the Trademark Act of 1947. It establishes the guidelines and procedures for trademark registration and offers protection against infringement, dilution and counterfeiting. Since its inception, the Lanham Act has undergone several amendments to accommodate the ever-evolving business landscape and technological advancements.
Who can file a trademark in the US? Condition for Individuals and Business Houses: Any individual or business entity having a legitimate business and a bona fide cause can file for registration for a mark in the US.
Mark: In order to be eligible for registration in US, a mark has to fall within certain parameters. It should be distinctive instead of scandalous. It should not resemble some other mark in a way that creates deception and confusion.
Documents Required for USA Trademark Registration
Certificate of Incorporation
The exact form of the Mark
Description of the goods or services covered in the mark
The international classification of the mark as per the NICE list
Image of the mark and three specimens of that image
To register a trademark, we need to first do a background search to ensure that the desired mark is available and not used earlier by anyone else. It can be done to ascertain the availability of trademark and to reduce the probability of objections in future.
After getting done with the research, we can proceed to the second stage which is known as the filing stage.
An application can be filed under USPTO’s (United States Patent and Trademark) TEAS (Trademark Electronic Filing System)
It offers two types of filing system and the fees for both the systems accordingly vary.
1. TEAS Plus
2. TEAS Standard
TEAS Plus – It is done when your product falls within a strict parameter of personal register; a personal register is a list which specifies the kind of goods that can be patented in US.
Ideal for – It is ideal for people whose goods specifically fall within the prescribed list and they can be strictly adherent to the guidelines of the category of good in which they are registering.
Cost incurred – It is the least expensive option to file a trademark in US. The cost is 250$ per class of goods/services.
TEAS Standard – The principle register allows an option to file for a separate trademark in which you can specify the kind of goods/service you want to register a trademark for.
Ideal for - It is ideal for people whose goods/services are of distinctive nature.
Cost incurred – It is a bit on the pricier side but it allows different categories of goods and services to register. The cost is 350$ per class of goods/services.
An application for registration can be filed under three types of heads –
Use in Commerce Application: This application is used to file if the main purpose is to sell or transport your goods outside of the state. This option is popularly used by US residents.
For instance, your product is being manufactured in Columbia, but you may want to sell it in Texas.
It can be filed after providing a specimen of your product and how you use your trademark, along with the date when the product came into existence and the date when it was first used in the market.
Intent to Use Application: This application is filed in advance for a product that hasn’t come into use as of now but will surely come into commerce (use) in the near future. It can be filed by providing the use of the mark and the details of the product. It helps in securing an advantage over a possible competitor.
It is not necessary for your product to be in commerce in order to be trademarked, but you should signify its actual use and file the required documents along with the fee to show your bona fide intention to register a mark.
Via the Madrid Protocol, if a foreign entity wants to file an application for trademark registration in United States then they can file it under this method. An application in WIPO has to be filed in this regard.
The registration application includes details such as images of the mark along with its description, address and other details of the owner of mark with a trademark fee.
After filing of the application under USPTO an examining attorney reviews the application and specifies if it needs any corrections. It is a very common sight to have some anomaly in the application. This anomaly is informed to the owner of the mark and a time limit is given to rectify the anomalies. If the applicant fails to rectify the anomaly or does not receive a clear signal from examining attorney, then he may proceed for appeal to the Trademark Trial and Appeals Board.
After overcoming all the objections, or in the case of no objections by the examiner, the examining attorney will approve the mark for publication in the official gazette. The Patents and Trademark (PTO) Office will send a notification of the mark's publication in the gazette to the applicant including the date of publication. After the publication of mark in official gazette any party can file objection against it within 30 days. Even if no opposition is filed, and the application becomes registered, it is still possible for a third-party to object to the registration of a particular mark. This objection is usually made through a cancellation proceeding, which is similar to an opposition proceeding except that it takes place after registration. When the opposition is unsuccessful or no opposition is filed, the application is forwarded for registration.
How to File a Trademark Application Through the USPTO?
Bona fide Application/Intent To Use – USPTO issues a notice of allowance in case of zero conflicts after 08 weeks of publication in the official gazette. After that it gives a deadline of 06 months to file a Statement of Use. A SOU consists of a declaration of use is signed by the applicant, and specimens showing how the mark is actually used. Once the Amendment to Allege Use is filed and accepted by the U.S.P.T.O., the application will be treated as if it were filed based upon the actual use of the mark in commerce. A person can file a SOU in the above specified time limit or can file for an extension of another six months. The examiner attorney reviews the SOU and if he gives it a clear pass then the USPTO (US Patent and Trademarks Office) registers it within two months.
Use In Commerce – After publishing the trademark in the official gazette for 08 weeks, if it does not receive an objection or clears all oppositions then it allowed to be registered.
Indian – same but it should also gives a deadline of 06 months to file a exist.
The Amendment to the application must include a verified declaration of use signed by the applicant, and specimens showing how the mark is actually used. Once the Amendment to Allege Use is filed and accepted by the U.S.P.T.O., the application will be treated as if it were filed based upon the actual use of the mark in commerce.
Validity of a USA Trademark Registration
A trademark registration in US has a validity of 10 years and in order to expand the validity it can be renewed again and again. However, after five or six years you should file an affidavit to keep the registration alive else it will be cancelled.
Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, ®, may only be used when the mark is registered in the Patent and Trademark Office. It is improper to use this symbol at any point before the registration issues.
Trademark Protection in the U.S.A
The Lanham Act and Federal laws of US provides protection and penalty for trademark violation in the USA. It is essential to understand the consequences and legal implications to avoid violations and ensure proper protection of trademarks in the United States.
Civil Penalties: These may involve monetary damages, including profits made by the infringer, and can be tripled if the violation is willful.
Criminal Penalties: In severe cases, trademark infringement can be considered a criminal offense, leading to fines and even imprisonment, particularly for serious violations.
How can an Indian Company file for a US trademark?
It can file via WIPO under the Madrid Protocol or it can register individually under Intent to Use or Intent To Commerce under USPTO with the TEAS filing system. But, for an Indian Trademark to be registered overseas, it should be firstly registered in India.
Conclusion
In conclusion, trademarks serve as invaluable assets for businesses, providing legal protection and fostering brand recognition in a competitive marketplace. By comprehensively understanding the US trademark registration process, the uses of trademarks, the governing laws, and the significance of proactive protection, businesses can effectively safeguard their brand's identity and cultivate a lasting competitive advantage.
eStartIndia is one of the India leading legal services platform help you to Register your Trademark in USA without any hassle at an affordable cost.
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