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I Am Filing A Trade Mark In the US. What Should I Know?

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As a business owner, you might consider filing applications to protect your trade mark internationally. One of these considerations may involve protecting your trade mark in the USA. The USA is Australia’s third most significant two-way trading partner in goods and services. Given the USA’s significant presence in global trade, protecting your trade mark in the USA can be an advantageous step. Below, we outline what you need to know about filing a trade mark application in the USA.

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First To Use

There are two ways to register a trade mark in the United States. You can:

  • file a direct application with the United States Patent and Trademark Office (USPTO); or
  • apply using the Madrid Protocol system.

The Madrid Protocol system is the international registration system that allows trade mark owners to protect their trade marks in multiple markets (including the USA) by filing a single application.

Like Australia, the USA follows the ‘first to use’ rule for obtaining trade mark rights. This means that if there is a dispute between you and a third party over a trade mark, whoever commercially used it first is likely to be able to claim rights, even if they did not register the trade mark first.

Goods and Services Classification

While the trade mark registration process in the USA is very similar to Australia in many respects, there are differences in the classification of an applicant’s goods and services.

The USA is generally seen as one of the more strict designations, requiring precise terminology in the specification of goods and services listed within the trade mark application. Therefore, prospective applicants should seek legal advice before filing an application directly in the USA or designating the USA via the Madrid system.

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Intent To Use

If you intend to file a direct national application in the USA, you will need to clarify the status of using your trade mark in your application. If you already use your trade mark in the US, you must nominate ‘use in commerce’.

On the other hand, if you have not started using your trade mark but intend to do so soon, you will need to nominate an ‘intent to use’ basis. The ‘intent to use’ must be more than just an idea that you might use the trade mark one day. That is to say, you must legitimately intend to enter the market. 

If you apply an ‘intent to use’ basis, once your trade mark has been accepted and passed the opposition period, you will be required to file a statement of use for consideration by the USPTO. Further government fees will apply to file the statement of use.

Maintaining Trade Mark Registration in the USA

Once you have successfully registered a trade mark in the USA, you must maintain the trade mark registration and provide documentation in the form of a ‘Declaration of Use’ within the fifth and sixth years after registration. The Declaration of Use indicates that your trade mark is still in use for all the goods and services for which the trade mark is registered.

What if I No Longer Offer Some Goods and Services?

If there are any changes to the scope of goods and services you provide, you must indicate this in the Declaration. Any goods and services not offered under the trade mark must be deleted from the registration. Furthermore, you will also be required to submit evidence indicating the use of the trade mark in commercial trade within the USA during the five years from your registration date.

Subsequently, the trade mark registration must be renewed between the ninth and tenth years after registration (or four years after your first Declaration of Use). From then, you can renew your trade mark every ten years indefinitely. First, however, you will need to prove that you still use the mark in commerce at regular intervals.

What if I Miss a Deadline?

If you miss the renewal deadline, there is a grace period of six months to file the maintenance documents. However, this does incur additional fees. In addition, you must complete both the initial filing date and the grace period, your trade mark will expire, and you will have to file a new application.

Key Takeaways

Suppose you are considering expanding your business internationally. In that case, trade mark protection in the USA should be at the forefront of your plans, given the close trade partnership between Australia and the USA. Given the complexities of the filing process in the USA, you should speak to a lawyer to gain further advice on filing in the USA or approaching an infringing third party located in the USA. 

If you need assistance filing an international trade mark, our experienced intellectual property lawyers can assist you. For your domestic business needs, you might also find our membership helpful. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.

Frequently Asked Questions

How can I apply for US trade mark registration?

There are two ways to register a trade mark in the United States. You can file a direct application with the United States Patent and Trademark Office (USPTO). Alternatively, you can apply using the Madrid Protocol system.

I have missed an important deadline for my US trade mark application. What can I do?

There is a grace period of six months to file the maintenance documents. However, this does incur additional fees.

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