Are you considering taking your Australian business to the United States of America? If you decide to take your business to the US, you may like to consider applying for a trademark (note in Australia, ‘trade mark’ is two words, compared to the US where it is one word). Applying for a trademark in the US will allow continuity of your business’ trademark protection in the USA as it prevents competitors from using your mark. This article sets out how to register a US trade mark from Australia.

Step 1: Consider Your Preferred Method for Applying

Trademark registration in the United States differs from other international applications. When trademark applications are filed directly to the US and not filed using the Paris Convention (an international registration system), marks are often filed with an intention to use the trademark. Unlike in Australia, use of a mark within the US market must be approved before the application proceeds from examination to final trade mark registration. If you are an Australian company with a registered trademark through IP Australia, you may like to apply to the US through the International Madrid Registration system. This process will avoid proving use at the first instance in the US.

In the US, use of the trademark must be proven during the fifth and sixth year of registration. If proof of use is not filed, then your application will be deemed abandoned or cancelled. Use will also need to be proven each time your registration is also needed to be lodged each time your mark registration is renewed.

There are several phases and processes to consider when applying for a trademark in the United States. The following stages from pre-filing to registration can take several months to years. The key stages are:

  • Pre-filing concerns;
  • Filing;
  • Examination;
  • Publication and Opposition;
  • Allowance;
  • Registration;

Step 2: Address Pre-filing Concerns

Before applying for a trademark, consult with your trademark lawyer any concerns you have with possible conflicting marks. If you are an Australian business opening up to America, you may like to choose between filing a direct application of through the Madrid Protocol.

Step 3: File Your US Trademark

The filing process requires procedural information about the application. You will be required to provide a name, address, entity type and jurisdiction of the application. The trademark information is also required for the application; a word mark, an image or non-latin characters.

You will also need a description of goods or services that are associated with the mark. Finally, you will require a basis for filing whether this is actual use within the US, bona fide intent to use (ITT) in the United States, a corresponding registration in the country of origin or an application under the Madrid Protocol or Paris Convention. If you are proving actual use of the trademark, you will require a specimen or sample of how your mark is used in trade or commerce in the US.

Step 4: Examination, Publication and Opposition

An Examination attorney will be assigned to your mark and review your application; this takes approximately 3 to 5 months. A trademark that has passed through the examination process successfully will then be published on the Supplemental Register for opposition. Third parties will have 30 days from the publication date to raise opposition to the trademark; this will be via a Notice of opposition.

Step 5: Allowance and Registration

Should you have lodged an intent to use application, an application that is unique to the USPTO filing system. To prove use of a mark requires a submission within six months to lodge a signed declaration called a “Statement of Use”. The Statement of Use will prove use and can be deferred for up to 6 months at a time, up to 3 years. If you receive no 3rd party objections, you will receive a US trademark with USPTO.

Proving Use of the Trademark

Use for a US trademark is defined as “use in commerce in the USA”. This means the mark must be used in its original form for the sale of goods or services. Use must be proved for each class claimed under a certain mark.

Use of your trademark for goods can be demonstrated by submitting evidence of products bearing the mark. By way of specimens you may submit brochures or promotional material, websites this applies to proving use for services as well. Specimens to prove services may also include business cards, menus and brochures.

Key Takeaways

Expanding your business to the US market provides access to a significant market. Consult trade mark lawyers to discuss the best way to protect your mark in the US. Consider whether you would like to protect your trademark through the Paris Convention or Madrid Protocol. Questions? Call us on 1300 544 755.

Sophie Glover
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