What is a Trademark?
As per WIPO a trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights[1].
In US Trademark law is mainly governed by the federal statute Lanham Act. Originally state Common law provided the main source of protection for the trademarks. However in late 1800, US Congress enacted the first federal trademark law. The main federal statute is Lanham Act which was enacted in 1946. Lanham Act is the main and the most extensive source of trademark protection in USA. Marks are registered with the US Patent and Trademark Office and such registered marks avail a high degree of protection. The search edition of United States follows NICE Classification. Application can be filed for goods in Class 1-34 and for Services in in Classes 35-45.
Whether USA also has a culture of filing Trademarks?
A data taken from WIPO reveals that in the year 2012 the number of classes specified in trademark applications by residents is 330,032 by non-residents is 96816 and by people from abroad is 1,059,956. This data has multiplied in ten years and the statistics of year 2021 shows rapid growth in the number of classes specified in trademark application. In case of residents the new digit recorded are 551748, by non-residents 347,930 and from abroad is 16, 18,678[1].
Whether there exists a law specifically dealing with filing application for the purpose of registration of a mark?
- “RULES OF PRACTICE IN TRADEMARK CASES, 37 C.F.R. 2 ET SEQ.
- FEDERAL STATUES: TRADEMARK ACT, 15 U.S.C. §§ 1051 ET SEQ.
What are the steps in the trademark registration process?
- There are mainly four steps which include APPLICATION, EXAMINATION, PUBLICATION and OPPOSITION.
How to file application[1]?
- First and foremost conduct a trademark search to ascertain the availability of trademarks. This is done to prevent unnecessary delay caused in filing the trademark which occurs due to objection or opposition.
- Application for the trademark to be registered on Principal Register can be filed by the applicant online on the Trademark and Patent office or can be sent through e mail by one :
- who is either the owner of trademark used in commerce or
- who has a bonafide intension to use a trademark.
- Application may be filed by the applicant in the US Patent and Trademark Office. Application and a verified statement along with specimens or facsimiles of the mark as used as may be required by the Director are to be filed. Prescribed filing fees must be paid.
- 4. The application shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.
- Upon the filing of an application for registration and payment of the prescribed fee, the Director shall refer the application to the examiner.
What is the prescribed fee for filing of the trademark for registration?
There are two ways of filing the fees namely TEAS Plus and TEAS Standard. In case of TEAS Plus the filing fees is $250 per class of goods/services and fees in case of TEAS Standard is $350 per class of goods/services.
How Examination and Publication[2] is conducted?
The examiner shall cause an examination and, if on such examination it shall appear that the applicant is entitled to registration, or would be entitled to registration upon the acceptance of the statement of use required by section 1051(d) of this title, the Director shall cause the mark to be published in the Official Gazette of the Patent and Trademark Office.
If the applicant is found not entitled to registration, the examiner shall notify the applicant of the reasons thereof. The applicant shall have a period of 6 months in which to reply or amend the application, or such shorter time that is not less than 60 days. If the applicant fails to reply or amend or appeal within the relevant time period, including any extension given, the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the application may be revived and such time may be extended. The Director may prescribe a fee to accompany any request to revive.
Post Examination the Mark is put up for publication to receive oppositions if any.
What is the process of Opposition to registration[3]?
- 1. Any person may pay fees to file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication of this title of the mark sought to be registered.
- Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days by the director.
- If the mark is not opposed then title shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the Patent and Trademark Office
- 4. If the mark is opposed by filing of notice of opposition then a notice of allowance shall be issued to the applicant if the applicant applied for registration under section 1051(b) of this title. The applicant is to file reply to the notice and the date for discovery and trial is set. The mechanism proceeds before the USPTO administrative tribunal. The fees to be filed by the oppose is $300 per class for each oppose.
- When opposition proceedings end in favour of applicant, the application return to its original status prior to opposition filed. The application then proceed to either be republished or to the registration process.
How to obtain trademark registration certificate?
The registration is issued electronically by the USPTO under signature of the director and with a digital seal, which authenticates the registration. The official certificate uploads at Trademark Status and Document Retrieval System. The link to access certificate is sent at the email address of the applicant.
Conclusion:
The trademark registration in USA is mainly guided by the federal statute Lanham Act although the option of State’s Common Law is still available. The registration process is a four-step process of application, examination, publication and opposition, which ultimately leads to registration of the trademark.
You can directly file an application for trademark registration in USA through madrid protocol or directly in USA through attorney. For any assistance in filing of trademark in USA or any query in relation to same you may write us at admin@ductuslegal.com
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[1] Section 1052
[2] Section 1062.
[3] 15 U.S.C. § 1063 (Lanham Act § 13)
[1] https://www.wipo.int/ipstats/en/statistics/country_profile/profile.jsp?code=US
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