How to Make Trademark Registration in the USA as a Foreigner
The American market is notably competitive, making the protection of your brand essential, given the rampant activities of "trademark trolls." These individuals or companies register trademarks with no intention to use them and exploit this situation for financial gain. If you're a foreigner looking to enter this market, here's a detailed guide on how to register your trademark in the USA.
Note: No need to establish an LLC in USA (Opens in a new window) to make trademark registration in the USA as a foreigner
Understanding the Basis for Trademark Registration in the USA
Trademark registration in the USA must be underpinned by a bona fide intention to use the mark in interstate commerce. There are two primary ways of going about this.
1. Extending Your Trademark to American Territory
If you're a trademark owner in your home country, say France, you can extend the protection granted to your mark to the American territory. This process involves leveraging the priority right obtained from your home country's Intellectual Property Office or the World Intellectual Property Organization (WIPO). This priority right is valid within six months from the date of filing in your home country.
This step gives you an edge by rendering any third-party application in the USA unenforceable during this period. Moreover, the date of protection can be retroactive, reflecting the date of priority claimed, not the filing date in the USA.
2. Registering Your Trademark with the United States Trademark Office (USPTO)
The second approach is directly filing your trademark with the USPTO. This process often requires an attorney admitted to an American bar who understands the country's legislation and federal functioning.
Being a federal jurisdiction, filing your trademark with the USPTO grants protection across the entire US territory. It typically takes 3 to 6 months for an examiner to review your application, but the protection act on your trademark is retroactive to the application day.
Key Methods for Trademark Registration in the USA
When depositing your trademark, you can choose between two methods:
1. Application Based on a Foreign Filing
This method requires (Opens in a new window) that the trademark has already been registered in another country. Conducting a prior art search on the main register or through a "common law search" is strongly recommended to avoid infringement.
Remember, even though the Nice Convention provided an international classification of goods and services of registered trademarks, the USPTO may have different interpretations of what falls into the classes. Direct registration with the USPTO can either be based on a pre-existing trademark already registered or in the process of being registered (filing less than 6 months old) abroad.
2. New Filing Without Precedence
Alternatively, you can file a trademark that hasn't been registered with another office, regardless of whether the mark is currently in use in the US or not.
If the mark is not yet in use in the USA: You can register with Intent to Use, promising to start using the mark effectively within six months following its deposit. The final registration is only completed if you provide proof of actual use. The protection term is granted for 10 years, renewable provided certain conditions are met.
If the mark is already in use in the USA: If the trademark is already being used in the US, you can file it with the USPTO under Use in Commerce. The protection term is also 10 years, with a possibility for renewal. However, you'll be required to sign a "declaration of continued use" between the fifth and sixth year of use.
Steps to Register Your Trademark in USA as a Foreigner
Step 1: Conduct a Search for Similar Trademarks
Ensure your trademark is distinctive, exclusive, and not significantly similar to any other marks registered at the federal and then the local level. You can verify the exclusivity of your trademark and compare it with other registered or pending marks using the electronic trademark search system TESS of the USPTO. Consider engaging companies like Better Legal to conduct the search on your behalf. Your search should also cover state governments and unregistered marks protected under common law according to the Lanham Act.
Step 2: Submit a Trademark Application
After ensuring there's no conflict between your trademark and other marks, proceed to the following:
Submit a trademark application via the TEAS Electronic Trademark Application Service (Opens in a new window) of the Patent Office.
Submit an image of your trademark.
Provide a brochure or sticker demonstrating how you use the trademark in your business.
Specify the type of services or goods for which you use your mark.
Submit the trademark registration application electronically.
Step 3: Pay the Trademark Protection Fees
Remember, the application filing fee, which is non-refundable, ranges between 225 and 325 US dollars for each type of services or goods registered. Your trademark protection in America will be in accordance with the categories of goods or services included in the trademark application.
Step 4: Respond to the Office's Action
Your application will be examined and reviewed by a specialist lawyer at the USPTO. If there are additional questions or inquiries from the office, an official letter called "office action" will be sent to you. Respond to this action within the specified time, or your application is considered canceled. If everything is in order, a notice of your trademark will be published in the official gazette. The whole process can take 3 to 6 months, and during this time, anyone can object to the trademark registration with a formal objection. It's advisable to engage a trademark lawyer to avoid any legal and technical complications.
Step 5: Monitor Your Trademark
Once the trademark registration is complete, start using the registered trademark symbol ® instead of ™. Regularly review the official gazette publications to ensure no one violates your trademark. If you discover someone infringing upon your trademark, you can file a "cease and desist" request, and the violator will be stopped. Remember, if your trademark is registered at the federal level, you have the right to file a lawsuit in a federal court.
Final Words
A trademark used continuously for over 5 years benefits from a presumption of validity, barring any claims of property rights over it. At the end of the 10-year protection term, a “declaration of continued use” is also required.
