To obtain a trademark protection in the USA, the application for the USA trademark can be filed through the national registration system or the international registration system. For a national registration in the USA, an application has to be filed before the United States Patent and Trademark Office (USPTO). Generally, the USA trademark application will be filed based either on “Use” or “Intent to use”. The basis of the trademark application will determine the process and duration of the registration process.
For the international registration, the World Intellectual Property Organization (WIPO) has provided a platform for international registrations among members of the so called “Madrid Agreement”. The USA is a member of this agreement, and therefore it’s possible to file an application for a USA trademark using the international registration system.
An applicant (both national and international) can file a USA trademark application without any representative. However, due to the complexity of the USA trademark application process, a trademark representative is strongly recommended by the USA authority. The authority will examine the USA trademark application thoroughly. These examinations include a formality examination, a distinctiveness examination and a search for prior registered USA trademark. To complete the USA trademark registration, valid proof of use is required. Once the authority’s requirements have been fulfilled and all required documents have been submitted, the USA trademark application will be published in the Official Gazette for opposition purpose. This opposition period lasts 30 days starting from the publication date. During the opposition period, any third party who has a prior USA trademark which is similar or identical to the published mark could oppose the registration. Therefore, before filing a USA trademark application, a proper search for similar or identical USA trademarks is advisable (the search will significantly lower the risk of complications and delays during the registration process). The duration of a USA trademark is 10 years from the date of registration and can be renewed for a period of 10 years.
After obtaining a USA trademark, the trademark owner has to use the trademark inside the territory of the USA within 3 years from the date of registration. If the USA trademark has not been used within this period, third parties may request the cancellation of the USA trademark.
In addition, the USA trademark system protects only trademarks which are currently used or will be used in the near future. Therefore proof of use is essential for a registration, a maintenance and a renewal of a USA trademark. A mark will not be registered unless proof of use has been submitted. Once the USA trademark has been registered, proof of use needs to be submitted between the 5th and 6th year from the date of registration in order to maintain the USA trademark. In order to renew the USA trademark, proof of use has to be submitted together with a renewal application between the 9th- 10th year from the registration date or renewal date.
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