Do you want to apply for trademark registration in the United States, but just don't know where to start with? Do you want to know all the important tips on the application? Through this easy and straightforward guide, we will explain to you all the crucial things you should know about applying for a trademark registration in the US.
Content
Documents and Information required for an US Trademark Application
The Process of Trademark Application and Registration in the United States
Smooth Trademark Application vs Unsuccessful Trademark Application
Documents and Information required for an US Trademark Application
To apply for a trademark registration in the United States, the following documents and information are needed:
1) Name and Address of the Applicant: you can file the application in the name of an individual person or a company. No matter which entity you would use to file an application, the trademark rights would be the same once registered. You can decide carefully on which entity to hold the trademark would be more suited to your needs.
2) Trademark Image: Applicants sometimes ask the questions like "Can I apply for trademark registration with text only?" "How about just logos?" The truth is, when submitting a trademark application, no matter whether your trademark is pure text, pure graphic, or text combined with graphics, when applying for an application we submit a trademark image to the Trademark Office . For example, if we are to apply for the registration of (pure text) Actualis trademark, usually what we submit is a JPG / PNG file containing purely of Actualis (text). Therefore, when submitting a trademark application, you must prepare a clear trademark design (regardless of whether it is pure text or graphic) for electronic submission.
3) Trademark Class and Designated Product / Service: The scope of protection of trademark registrations is not unlimited. You must the designate trademark class(es) and item(s) (that is, to specify the usage and the scope of protection of the trademark) according to the products and services provided by the trademark when submitting an application. For example, if your trademark is a clothing brand, you will need to include Class 25 in your application, and specify the products provided under the trademark (such as shirts, trousers etc.). An important point to note is that the cost of your application is determined by the number of classes included. The more classes you designate, the higher the cost of the application will be (To know more about Trademark Class, you can read further on our article: What is Trademark Class? (in Chinese only))
Please also note that the United States has its own version of product and service descriptions. Although they are roughly similar to those of other countries, they do have different wordings, rendering the items accepted in the other countries not acceptable in the United States. You will need to check if your descriptions are within the official list (or if not, acceptable by the Trademark Office) before submitting an application, or your application would risk refusal. If unsure, please seek professional advice.
4) Trademark Filing Basis: For an US trademark application, there is a special requirement: Specifying your Filing Basis. That means when filing your application, you will have to tell the Trademark Office whether your trademark has been in use in the United States (Actual Use basis), not being used yet but will be used (Intent-to-use basis), or if your application is based on the application or registration of the same trademark in a foreign country (based on foreign application / registration). Choosing different kind of filing basis will affect whether evidence of use and fees would be required. (For example, if you choose the filing basis "Actual Use", you will need to submit evidence of use of the trademark in the United States to the Trademark Office at the time you are submitting a trademark application, with no additional fees required; if you choose "Intent-to-use", evidence of use and extra fees would be required after your application is approved).
In addition, be reminded that non-American applicants (not an American natural person / American company) will need to appoint an agent to file and handle an application, as required by the US government.
The Process of Trademark Application and Registration in the United States
After understanding the information required for US trademark applications, let us take a look at the process of US trademark applications:
Step 0: Trademark Search
Conducting a trademark search means making use of the official trademark database and locating any existing trademark application or registration that is similar to yours.
While trademark search is not a must before filing a trademark application, conducting one will greatly increase your chance of success, as it could help you to assess if there is any likely obstacle to your application. That is why we strongly recommend doing so before your submission of application.
According to the statistics of the US Patent and Trademark Office, there were around 200,000 trademark applications filed in the United States in 2021; Alongside with the large number of applications (which would make applications more likely to conflict with each other with similar marks), the US Office tightens up their requirement from time to time, which keeps the refusal rate up.
<a href="https://tmsearch.uspto.gov/）That is whyThat is why we recommend undergoing a search before applying. Please note that in addition to locating identical or similar trademarks, a proper search would also involve finding out the same or similar trademark class of those that you intend to apply for. (For trademark application refusal issued based on existing similar marks, you can read more on: Similar Marks)
If no identical or similar trademarks are located in the search, though there is no guarantee that your application will surely succeed, the chance of success will reasonably higher than filing without searching.
Step 1: Submit the Application
If the search results are ideal, you maybe good to go for filing your application. All US trademark applications are submitted to the US Patent and Trademark Office. The information that needs to be submitted has been listed out earlier in the article, namely, applicant's name and address, trademark image, trademark class(es) and the designated product / service, and the filing basis of the application. If the filing basis chosen is "Actual Use" or "Foreign Application / Registration", relevant documents must also be submitted at this step.
Step 2: Trademark Examinations (about 6 to 12 months)
After receiving the application, the US Patent and Trademark Office will examine the application and it takes around 6 to 12 months:
Examination (Formality): The Office will review on the matter for example whether the application form is filled out correctly, whether all the required information is provided, whether the description of products / services is acceptable etc..
Examination (Substantive): The Office will review if there is any problem with the trademark itself refraining it from be able to get registered, or whether it is considered to be similar to any prior trademark etc..
If your application fails either of the above two examinations, an official notice will be sent to you, requesting correction or change of the application information, or worse indicating a rejection of the application. If you do not reply to the official letter timely, your application will be rejected.
(On those trademarks which cannot be registered in nature, you can read more in our articles: descriptive trademarks / deceptive or dishonest trademark applications / identical or similar to prior trademarks (in Chinese only))
Step 3: Publication Period (30 days)
Assuming the application is approved, it will enter a 30-day publication period. The purpose of the publication period is to allow anyone who wishes to oppose the application a chance to submit an opposition within the publication period. The reasons for filing an opposition might be similarities shared between trademarks, infringement of trademark rights etc..
During the publication period, we would say no news is good news, as that simply means no opposition is filed against your application.
Step 4: (For "Intent-to-use" Applications only) Submit Statement of Use and Fees
If your application's filing basis is "Intent-to-use", after the publication period, you will need to submit evidence of how the trademark is being used on the products/ services in the United States (Statement of Use (SOU)), together with the fees, to the US Patent and Trademark Office within 6 months after the application is approved and the "Notice of Allowance" is issued.
The Office will inform the applicant after reviewing the evidence, on whether it is acceptable or not. If the evidence is unacceptable, the applicant will need to submit evidence again. Examples of unacceptable evidence are, for example, computer modified pictures/ computer generated photos.
Step 5: Issuance of Registration Certificate (Around 2 months)
If the trademark application passes the publication period, and did not receive any opposition application, (in the case where there is no problem with the evidence of use) it will then be formally registered in the United States. The certificate of registration will be issued around 2 months after the end of the publication period. Please note an electronic certificate will be issued, instead of a paper certificate.
Your trademark is now registered across all states and cities in the United States, and will be valid for 10 years. The registration will be renewable every 10 years.
Step 6: Post-Registration Continuous Protection: Trademark Watch
Obtaining the registration does not mean all the work to guarantee protection of your trademark is done. There is still chance that somebody will apply for a similar trademark of yours and have it successfully registered, through approval of the US Office.
Trademark Watch is the solution to this issue. Through continuous monitoring and update of your trademark registration status and upcoming applications (which might be considered to be similar to your trademark), you will be able to prevent somebody to register a similar trademark and stop them during the opposition period, strengthening your market share and repelling competitors.
Actualis provides Trademark Watch/ Monitoring service by making use of cutting-edge AI technology combined with our experience, all come together with a incredibly affordable price.For more information on trademark watch, you can know more in our designated page: What is trademark watch? (In Chinese only)
Smooth Trademark Application vs Unsuccessful Trademark Application
The above steps list out a smooth procedure and timeline of a trademark application in United States; but if unfortunately, you encounter any of the following situations during the application process, more time might be needed to complete the registration process. Or worse, if the application is filed poorly due to a lack of experience, your application may be rejected based on the following grounds:
The US Trademark Office considers the form to be filled in incorrectly (for example, mistakes in product or service classification, mistakes in description of the product or service, applying for more than one (yet substantially different) trademark images at a time, etc.)
The US Trademark Office considers the trademark not qualified for approval (for example, it does not meet the requirements for registration or is found to be similar to some prior trademarks)
The application is opposed during publication period
To prevent the above situations from happening, you can consider entrusting a professional trademark agent to handle your case for you, as trademark applications involve complex and professional knowledge and expertise. Most of the risk of refusals are indeed avoidable if preparation work is done thoroughly before the filing of an application. Besides, if the applicant is not an American entity, it is also required by the US Office that the application to be handled by a trademark agent.
Actualis' Professional Trademark Service and Quotes
Actualis is a professional IP agent with extensive knowledge, capable of assisting you to complete trademark applications without hassle. We have abundant experience in handling cases for a wide spectrum of companies in different industries, and excels in providing tailor-made filing strategies for your company.
For United States trademark application, our affordable fees are as follows:
- Filing with one trademark class: HK$6,500 (inclusive of the official fee)
- Filing with each additional class: HK$6,000 (inclusive of the official fee)
If you have any question on US trademark application, just feel free to contact us for free consultation: (email: ip@actualisip.com) (Telephone/ Whatsapp: +852 9545 3177).
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