Making it big in the US is no mean feat for any business, no matter the ambition, planning and expertise that drive your strategy. Being able to scale across the pond, however, opens up an expansive new market, and opportunities that may not be possible if you restrict yourself to the UK. We’ve supported businesses from start up to scale up who are now looking for a route to market in the US. And one of the most important things to think about if you’re heading State-side is your intellectual property. Obtaining trade mark protection is one of the best ways to protect value in your brand, but the process for obtaining trade mark protection is not uniform across the globe.
There are quite significant distinctions between UK and US trade mark law – in the US, trade mark rights are created through use and not through registration (though the option to register exists), and rights are often limited to a particular geographic area. In this article, we’ll consider the differences in common aspects of trade mark law in the context of registering a trade mark in the UK and US.
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'Acquired distinctiveness' of trade marks
In the UK, if a trade mark application is rejected for being descriptive or non-distinctive, the applicant can simply respond to the examiner and claim ‘acquired distinctiveness’. What is acquired distinctiveness? This is where the sign has become distinctive through use in relation to the goods or services for which registration is requested. The applicant must provide supporting evidence of this.
The US, on the other hand, has two trade mark registers – the Principal Register, which is the primary register of trade marks, as well as the Supplemental Register, which is the secondary register. If an application is made which is deemed to be descriptive or non-distinctive, that mark will sit for five years on the Supplemental Register, after which time the applicant can claim that the mark has now acquired distinctiveness. This five-year wait is significant, and it makes sense that business owners apply for a US mark sooner rather than later where they have descriptive marks.
Scope of trade mark registration in UK & US
In the UK, once a trade mark application has been registered successfully, it will apply throughout the whole of the UK.
In the US, there is a two-tier system at both state and federal level. Individual states offer the opportunity to register trade marks, but protection is limited to that state. It’s also worth noting that there are different requirements in different states.
Federal registration offers nationwide rights – to enjoy these you must file an application and receive a registration from the United States Patent and Trade Mark Office (USPTO). Federal registration is not required, but it will enhance your rights.
Basis for filing your trade mark
In the US, every trade mark application must specify a ‘basis’ for filing. The majority of US-based applicants will file on the basis of their current trade mark use (known as ‘use-in-commerce’) or their future intention to use the mark (known as ‘intent-to-use’). The difference between these two bases is when use of the mark commenced (or is going to commence).
If you are already using your mark, you would file on the basis of use-in-commerce, but if you have yet to start using your mark, you would file on the basis of intent-to-use. It’s worth noting that it is also possible to specify that the trade mark is in currently being used in relation to some particular goods and services, with the intent-to-use the trade mark in relation to others.
However, the position is different again for foreign trade mark owners seeking to register their trade mark in the US. They may file in respect of an application made or registration granted under another jurisdiction – this is known as a ‘section 44’ application, referring to the relevant section of the US Trademark Act. There are two basic categories of section 44 application:
- US applications relying on foreign applications to secure a priority filing date in the US (section 44(d)); and
- US applications relying on ownership of foreign registrations as a basis for registration in the US (section 44 (e)).
We typically seek to rely on a section 44(e) filing basis where possible, as this provides a basis for publication or registration reliant on the fact that the applicant already has a valid registration in place. However, it’s worth noting that the registration being relied upon must be held in the applicant’s country of origin.
Section 44(d) provides a basis for receipt of a priority filing date and not a basis for publication or registration, and so your rights are enhanced under the section 44(e) basis described above. However, section 44(d) relates to applications and does not require that an existing registration be held in the applicant’s country of origin, and so this offers an option if you are unable to fulfil the section 44(e) criteria.
In the UK, there is no concept of basis. You may file a mark if you already use it or intend to use it. However, it is worth noting that a party may seek to invalidate your registered mark after five years if you are unable to provide evidence of use.
What is the opposition period in the UK & US?
In both the UK and the US, following a trade mark application, details of the trade mark are published and there is a period of time during which third parties can oppose the registration of the trade mark.
In the UK, details of applications are published in the Intellectual Property Office’s online journal for a period of two months, which can be extended to three months if a ‘notice of intention to oppose’ is filed by a third party.
In the US, in the context of federal registration, the trade mark will be published in the Official Gazette for a period of 30 days. Any party that believes the registration would be harmful to it may file an opposition within that period and no further action will be taken until the opposition is resolved.
How long does it take to register a trade mark in the UK & US?
Generally, it is much quicker to get a trade mark registered in the UK than it is in the US. This is due to the fact that to obtain rights in the US, you need to be able to demonstrate use to obtain protection and if the initial application to the USPTO is not approved – for example, if it is not determined to have acquired distinctiveness as described above - there may be numerous other hurdles to overcome, which all takes time. Obtaining trade mark protection in any country is not straightforward, but as you can see there are certain nuances in the US system that make it particularly challenging. Seeking expert support from an experienced trade mark solicitor will certainly give you the help you require to give your business the necessary protection if you’re considering making a move into the US market.
