Registering a TM in the US

Any symbols, drawings, words, or combinations thereof can be registered & protected by US laws. The same applies to slogans, colors, packaging, sounds, tastes, smells & other NVMs.

US: Obtaining Ownership of Unregistered TMs

An unregistered but valid TM is protected by law; however, obtaining unregistered TM rights in the US is limited to the region in which a TM is used or known to consumers.

US: Registering Well-Known Foreign TMs 

US law generally doesn’t protect well-known trademarks or marks that aren’t used in the US.

Benefits of Registering a TM

Registering a TM in the US provides its owners with an opportunity to prove its validity nationwide from the date from the date of filing a TM registration application in the US. 

Registered TM owners can:

• defend their TMs in federal courts;
• obtain otherwise unavailable remedies; 
• use the symbol;
• use registration of a TM in the US as a basis for filing a suit overseas.

Documents Required for Registering TMs in the US 

Documents provided by applicants must:

• contain their address, name & organization type;
• bear their signature;
• identify the line of business they’re in;
• include a TM’s description;
• contain proof of payment of registration fees.

Additional requirements include:

• proof that a TM is used in trading;
• date of first use;
• date of first use in trading; 
• proof of a TM being used for a minimum of one product or service.

Applicants aren’t required to conduct preliminary search prior to submitting a TM registration application in the US.

Time & Cost

Normally, registering a TM in the US takes no longer than nine months & costs four hundred dollars. When submitting an application through TEAS, applicants are provided with two options:

• paying a reduced fee of two hundred seventy five dollars;
• paying a reduced fee of two hundred twenty five dollars.

US: Using TMs Using

Because the US is a signatory to the PCIP, applicants can register TMs by applying for registration in the country of its origin. A foreign registration can also serve as a basis for extending US protection through the Madrid Protocol. Owning TMs registered abroad constitutes no ground for not accepting an application or supporting enforcement action against illegal use in the US.

Marking

Owners of TMs can use the TM symbol to backup their claim for TM rights, irrespective of whether their TMs are registered or not. The symbol should be used with USPTO registered marks.

Appealing Rejected Applications

Appealing a rejected appeal requires submitting a notice of appeal to the TTAB & paying a fee within six months from the date of rejection. Notices of appeal must be made through the ETLAS; applicants must then file a summary of their appeal within two months days of the date their appeal was submitted. Applicants dissatisfied with the TTAB's decision may appeal to the US Court of Appeals or US District Court.

Registration can be canceled if:

• fraud was detected;
• registered TMs have become common;
• registered TMs are functional;
• TMs haven’t been in use;
• registered TM’s connection with individuals, institutions or national symbols was invalid;
• TMs consist of a flag or coat of arms of the US or any other foreign country;
• registered TMs were used to distort the source of services/goods with which they were used.

Duration of Registration

Registration of TMs in the US can continue indefinitely if their owners ensure their proper maintenance & update documents regularly. Retaining TM registration in the US requires TM owners to file a declaration of use, attaching a sample to it proving that a TM mark is used  in the US trade. Should TM owners submit the required documents, registration can be renewed every ten years.

Cancellation

Registration can be cancelled. There’s no charge for this & the request can be submitted electronically. If a registration isn't subject to cancellation prior to TTAB, USPTO will process the request. If a registration is subject to cancellation prior to TTAB, TTAB will handle the request.

Associated IP Rights

While the TM Law protects TMs used with goods or services, the Copyright Law protects original works recorded on a tangible medium.TM owners  can claim copyright & TM protection in the original design. Slogans & musical compositions can be protected by both the Copyright & TM Laws. TM owners can also apply for TM protection of a product’s design, shape, packaging or appearance. TMs that meet the requirements for TM protection can also be protected under a design patent if it’s a new & decorative design. Publicity rights may also be available in certain cases.

Online TMs & Domain Names

The CC Act provides protection against illegal use of TMs in domain names. It applies to individuals that

• intend to derive profit by illegally using TMs;
• register, transfer or use a domain name that’s confusingly similar to a TM.

If there’s reasons to believe that a TM was used in good faith, no action will be instigated. Otherwise, violators may face cancellation, forfeiture or transfer of their domain names to a TM’s legal owners.