1. TRADEMARK REGISTRATION IN THE USA
The American market is extremely contentious, and defending yourself or positioning yourself
there requires protecting your brand, at the risk of being confronted with legal actions brought by
These people or companies, quite common in the United States, register trademarks without the
intention of using them and then use them as leverage against companies whose trademarks have
been stolen by these "trademark trolls". They want to achieve financial valuation by either
granting the concession at astronomical prices or claiming huge interest in return for the
assignment of the license, under penalty of legal action for infringement.
Trademark registrations in the USA must be based upon a good faith intent to use the mark for
How do I register a trademark in the US
Trademark registration in the United States can be done with the United States Trademark Office
A foreign applicant has the option of filing his trademark directly in the USA at the American
Trademark Office (the USPTO). However, this requires the intervention a licensed American
lawyer, familiar with the legislation of the country and its federal functioning, and responsible
for representing the applicant before the Office.
In fact, the USA has federal jurisdiction in intellectual property matters. This allows the
trademark owner to file a trademark at the USPTO and protection is granted across the entire
territory. It takes between 3 and 6 months before an Office examiner can seize the file. We
advise that you do not wait to be present to complete the steps as the USPTO will have the
protection acts on the mark. Retroactive to the date of the request.
Two methods for a trademark registration in the USA
Thus, the depositor can make his deposit according to two methods:
1. An application based on a foreign filing
This implies that the trademark is already registered in another country. This is why it is
strongly recommended that you conduct a prior art search using the main register or a
"common-law search" (which targets federal applications and registrations and state
registrations, but also unregistered uses of trademarks and trade names), in order to avoid
any action for infringement.Registration is carried out in the Main Register directly with
the USPTO, either based on a pre-existing trademark already registered or in the process
2. of being registered (filing less than 6 months old) abroad. In this case, the filing date in
the US will be the same as that of the office that first registered the mark.
2. A new filing without precedence
The filing could also be related to a mark not yet registered with another office. This is
regardless of whether the mark has been used by a US service or not.
If the brand is not yet exploited in the USA
If the mark is not in use on American soil yet, it is a filing titled Intent to Use. This is where the
depositor agrees to start to exploit the mark in an effective manner within the six months
following its deposit. The final registration can only be made if there is proof of the actual use.
The term of protection granted to the holder is for 10 years, renewable on a regular basis.
However, the applicant must have used the mark within 6 months of receiving the Notice of
Allowance (USPTO) and he has asked for an extension for 6 months. This can be renewable
within the 3 year limit.
If the brand is already operated in the USA
Faster, when the trademark is already used in the USA, it can be filed with the USPTO with the
mention Use in Commerce (used in commerce), when its use in American commerce is real and
prior to the application, providing proof of use.
The term of protection is also 10 years, with the possibility of renewal. However, in the interval
of this 10-year period, the owner is required to sign a "declaration of continued use", between the
fifth and sixth year of use, to confirm that the mark has remained in use for the products or
services covered by the registration, and supported by common use of the mark.
If it is demonstrated that the mark has been used uninterruptedly for more than 5 years, then it
benefits from a presumption of validity, preventing any claim of property rights over it.
At the end of the term of the protection granted to the mark, i.e. every 10 years, a “declaration of
continued use” is also required.
How to register logo trademark in the USA?
The USPTO can authorize the registration of the mark but several conditions must be met. The
mark must be distinctive, it must not be descriptive of the products and services that will be
Section 15 of Lanham, 15 USC § 1065 permits the registration of a trademark and the filing of a
statement. The criteria are use for at least five consecutive years from the date of continuous
trademark registration and current use in commerce.
3. Trademark registration process in USA
The owner of the mark must provide proof of its use on the day of deposit. It remains in practice
difficult to report. The proof can be constituted by the sale of products to the public with the
name of the mark, of its advertising use.
The brand name must be written on the packaging or the products or the brand must be
connected to the products. Additionally, the products must be sold in at least two US states.
Registration will be granted but at the end of the opposition period, which will last thirty days
from the publication of the filing. All interested persons will be able to assert their right, but they
must provide proof of an infringement of intellectual property rights.
You can also verify the brand availability. To check it, you can go to the Trademark Register -
TESS (Trademark Electronic Search System). This is a database of every US trademark applied
for or registered. You will be able to find brands with common elements or a specific brand.
How long does it take for a trademark to be approved in the US?
The amount of time it takes to register a trademark is impacted by a variety of factors. А
trademark can be rejected for a number of legal reasons. The procedure typically takes 12 to 18
What documents are required for trademark registration in USA?
The list of documents are as follows:
● Name, address, and signature of the applicant along with the entity type
● The type of goods and services under which the brand is being registered
● The basis of filing
● The drawing or a digital image of the logo/trademark that has to be registered
● Description and details of the trademark
Trademark registration in the US: timeline
The validity period of a trademark in the United States is ten years from the date of registration
of the deposit. The trademark can then be renewed indefinitely for periods of 10 years.
After five years of use, the mark may be registered on the main register if it is descriptive. It will
acquire its own identity with a distinctive character.
4. Trademark registration in the US also can be done online. Electronic filing is mandatory for
trademark submissions, to file applications one must use the Trademark Electronic Application
You will need to provide and maintain an accurate home and email address. To ensure that your
trademark can be registered in the United States, you can request a quote from CGV-Expert, a
specialized lawyer will be able to advise you.
Trademark registration in the US: renewal
The request for renewal may be made during the twelve months preceding the expiry date of the
trademark as well as during the grace period of six months following it, subject to the payment of
Trademark registration in USA: price
Search rates 1st class $100.00 – Each additional class $80.00
Price listed is for one word mark. If the mark includes figurative elements (logo), a surcharge of
USD 30 per class will apply.
Price for 1st class filing applications $650.00 - Each additional class $590.00
When filing a trademark in the United States, one must choose a basis for the application.
Depending on the base chosen, supplements may be charged. Consult our Advisor for more
When a European company plans to enter the American market, it must be aware of the need to
use or have a “serious intention” to use its trademark in that territory even before filing an
application. Indeed, unlike the French and European systems, the American trademark system is
based on the creation of use rights rather than the registration of creation rights: first to use, not
first to register.
In the United States, the right to a mark is not conclusively granted by the US Patent and
Trademark Office (USPTO) until evidence of current use in business and territory is provided.
or, in the case of an international filing, without the applicant confirming that he has a “good
faith intention” to use as a mark the sign for which he is seeking protection. This attestation has
the meaning of an oath and must be taken very seriously by the contributor.
Trademark registration does not make it possible to have a presumption of ownership of rights
unlike the owners whose mark is registered on the main register. This registration is limited to
5. marks that are used in the United States or its territories and those based on a foreign registration
issued in the applicant's home country.
The additional register offers important advantages: the mark will appear in trademark searches
and the applicant will be able to use the symbol ® and other registration indicia in connection
with the mark. Further, the registration number of an additional registration is consecutive to
marks on the main register, so the particular register cannot be determined from the registration
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