Brand protection is carried out by registering a TM in the US, EU & other jurisdictions in which a company plans to operate. TM registration in the US is done pretty much the same way; however, there’s certain nuances which require further elucidation, especially for those who want to start a business in America. So, let’s take a closer look at them.
US: TM Registration
Registration applications can be made based on the actual use or intent to use. Please note that a TM isn’t registered until a declaration of use is filed & proof of use is accepted. An exception is made for applications based on registrations outside the US & done as per international conventions.
Examining a TM application in the US takes approximately three months, while the total period for considering a TM application lasts approximately one year.
A TM may be denied registration if:
- it purely describes services/goods specified in the application;
- it’s functional, decorative, informational in the context in which it is used;
- it’s a product configuration.
Merely descriptive TMs may be registered based on their acquired distinctive features. Continuous, commercially significant & substantially exclusive use over a period of five years creates the presumption of acquired identity.
Previous TM Rights
Previous TM rights may be grounds for excluding or deregistering a TM in the US. There’s several ways in which previous TM rights can be revoked (e.g. by providing proof of not being used within a 3-year period).
US: Resolving TM Disputes
Settling TM disputes in the US requires filing an application with the TTAB. The most common procedure is based on raising objections & issuing cancellations. In each case, the plaintiff must state what their legitimate commercial interest is & specify the grounds on which they base their case (e.g. universality of the contested mark, functionality & the likelihood of confusion with previously registered TMs).
TTAB decisions can be appealed:
- with the Federal Circuit Court of Appeal;
- with district courts.
We hope you have found our short review useful & quite insightful. Should you have any further questions regarding registering a TM in the US, do not hesitate to contact IQ Decision UK. Our team of experts will be happy to help you understand the intricacies of American law and provide assistance in resolving TM disputes in the US.