1. What is a trademark? What is considered a “trademark in use”?

A trademark is considered to be used in commerce with goods when

(1) the mark is placed on the goods, their packaging, or displays associated with the goods at the point of sale (including online displays), and

(2) the goods are actually sold or transported in commerce.

A trademark is considered to be used in commerce with services when

(1) the mark is used in the sale, advertising, or rendering of the services, and (2) the services are actually rendered in commerce.

Use in commerce must be made in the ordinary course of trade, and not merely to reserve rights in a trademark or service mark through token use.

Under U.S. federal law, there are three types of commerce:

(1) Interstate commerce (between two or more U.S. states);

(2) Territorial commerce (between the United States and a U.S. territory);

(3) Foreign commerce (between the United States and a foreign country).

2. How likely is my application to be refused? What should I know about the TEAS Plus filing system?

There are generally two ways to file a trademark application with the United States Patent and Trademark Office (USPTO): TEAS Plus and TEAS Standard.

TEAS Plus has a lower filing fee, but applicants must select goods and services descriptions that already exist in, and have been approved by, the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual).

The initial refusal rate for applications filed through TEAS Plus is approximately 66.4%, while applications filed through TEAS Standard have a refusal rate close to 85%.

3. What is a specimen of use or a declaration of use?

In the United States, applicants must submit a specimen of use showing the trademark as actually used in connection with the sale of the goods or services at the time of filing.

Alternatively, an application may be filed based on intent to use the trademark. Once the application is approved, the applicant will have six months to submit proof of use. This deadline may be extended, for a total period of up to three years.

4. How long does it take to obtain approval and receive the registration certificate?

If the USPTO does not take any action (such as issuing an Office Action or requesting additional information), it generally takes three to six months for the trademark to be published for opposition.

If no opposition is filed during the publication period, the application will be approved and a registration certificate will be issued. The ® symbol may only be used after the registration certificate has been issued.

5. Does having a registered trademark in another country help with U.S. trademark registration?

Trademarks are territorial in nature. Generally, owning a trademark in one country does not help in obtaining registration of the same trademark in another country. It does not speed up the registration process nor increase the likelihood of success.

However, if you have a trademark application pending or a registered trademark in another country or region, you may seek protection by filing through the World Intellectual Property Organization (WIPO) or by filing a direct U.S. application.

If a foreign application is pending, a U.S. application must be filed within six months of the foreign filing date in order to claim priority under the Paris Convention, provided that both countries are members of the Convention.

Applicants may also rely on a foreign registration to avoid the requirement of submitting a specimen of use. When registering in the United States, the foreign registration must be valid and not expired. Filing based on a foreign registration can expedite the U.S. registration process, as the applicant is not required to prove use of the trademark in U.S. commerce prior to registration.

Trademark Search:

Before applying for a trademark, a company should first conduct a trademark search to ensure that the desired trademark has not already been registered by another company.

Application for Registration:

The company must submit a trademark application form, the trademark image/logo, the trademark class, and other relevant documents, along with the required registration fees to the United States Patent and Trademark Office (USPTO) to apply for registration.

Examination:

The USPTO will examine the submitted application to ensure that the proposed trademark does not infringe on the rights of other trademarks. The office will also review the trademark class, spelling, design, and other elements.

Registration:

If the trademark application passes the USPTO examination, the trademark will be officially registered, and the company will receive a trademark registration certificate. The company can then legally use the trademark in the U.S. market.

Considerations:

The U.S. trademark registration process is relatively complex. Companies must strictly follow the legal procedures and guidelines to ensure that the application is approved smoothly.

The U.S. trademark registration process forms the foundation for protecting a company’s brand. Before applying, companies should conduct a trademark search, submit the application form along with the trademark image/logo and class, and pay the applicable registration fees. After USPTO examination and approval, the trademark will be officially registered, and the company can use it in the U.S. market. Following legal procedures and guidelines carefully is essential to ensure a successful registration.