Brand protection should be high on your priority list when considering US expansion. Registered trade marks are one of the most efficient forms of brand protection, giving you a monopoly over your marks. Trade marks are territorial rights, meaning they operate only in the country of registration. To obtain the protection needed in the USA, you must register your branding as US trade marks.
In this article, our trade mark lawyers consider the benefits of US trade mark registration, discuss key factors to consider when registering a US trade mark and explain the process involved.
Contents:
- What are the benefits of a UK business registering a trade mark in the US?
- Can a UK business apply for trademark registration in both the UK and the US?
- Why you should conduct a trade mark search before you apply for a US trade mark
- What can you register as a trade mark in the US?
- What classes of goods and services are covered under the US trade mark registration system?
- How to register a trade mark in the United States
- How much does it cost to register a US trade mark?
- How long does the US trademark registration process normally take?
- Is it possible to expedite the US trademark registration process?
- How long does a US trade mark last?
- Renewing your US trade mark
- Summary
What are the benefits of a UK business registering a trade mark in the US?
Registering a trade mark in the US has several key benefits, including the following:
- Protecting your position in the marketplace
The US is saturated with goods and services, all vying for the American consumer’s attention through the use of memorable names, eye-catching logos and catchy slogans. Developing a strong, recognisable brand can be the difference between success and failure in the US market.
Once you have created an on-point brand, or preferably in the early stages of brand development, you must take steps to protect it. It can be disastrous to spend time and money developing branding that you cannot subsequently use as someone else has got there first. By registering a US trade mark before you even enter the US market, you can safeguard your position ahead of launch.
- Preventing trade mark squatting
Timely US trade mark protection can prevent so-called ‘trade mark squatters’ from registering trade marks based on your brand and seeking to hold you to ransom by demanding hefty prices to transfer the rights to you. High-profile brands are at the greatest risk of falling victim to trade mark squatting, but virtually any business can be affected, and prevention is always better than cure.
- Enforcing your rights
A trade mark is one of your business’s most valuable assets. When you register a trade mark in the US, you can rely on your rights to stop third parties from using your mark without permission. With a trade mark you can avoid confusion in the marketplace, protect your market share and safeguard your reputation.
Can a UK business apply for trademark registration in both the UK and the US?
Yes, you can apply for trade mark protection in the UK and the US. In fact, if you trade in both countries, or plan to expand into the US, concurrent trade mark protection is essential.
You should apply for your desired trade marks in the UK first. Then, if you file your US trade mark application within 6 months of your UK application, you can use the priority date of your UK application in the US. This means that your US application is effectively backdated to the date you applied for your UK mark.
Why you should conduct a trade mark search before you apply for a US trade mark
If your proposed US trade mark is too similar to one already registered and creates a likelihood of confusion, the United States Patent and Trademark Office (USPTO), the body responsible for trade marks in the US, can reject your application. A likelihood of confusion is the most common reason for the USPTO rejecting trade mark applications.
A trade mark need not be identical to an earlier mark to be refused on the basis of a likelihood of confusion. Even if your trade mark does not look similar to an existing one, the USPTO may still reject it based on its sound, appearance or commercial impression. For example, The USPTO deemed the marks ‘T Markey’ and ‘T Marquee’ confusingly similar, since they are pronounced the same, even though they look different.
When deciding whether there is a likelihood of confusion between two trade marks, the USPTO will take into account whether the relevant goods or services are related. Say, for example, you apply for a trade mark for clothing. Your application may succeed even if a similar mark is already registered, provided the existing registration is for an entirely different class of goods or services, such as banking services.
To avoid falling foul of the likelihood of confusion rule, you should undertake comprehensive searches of the US trade marks database to identify any potentially problematic existing marks. Trade mark clearance searches are incredibly complex and littered with traps for the inexperienced. Most brand owners seek the help of experienced intellectual property professionals when undertaking them, to ensure nothing major is overlooked. Our trade marks solicitors work closely with a network of trusted US trade mark attorneys. They will advise on the most appropriate attorney to help in your situation and liaise with them on your behalf, making sure the attorney has a thorough grasp of your commercial operations and brand protection goals.
What can you register as a trade mark in the US?
US trade mark protection is available for any sign capable of distinguishing your goods and services, including words, logos, colours and shapes. Examples of well-known US trade marks include Google, the Nike Swoosh and the blue used by Tiffany in connection with their jewellery boxes.
There is a notable difference between what can be registered as a trade mark in the UK and the US. The UK has one trade mark database listing all trade marks that qualified for protection at the time of application, meaning they satisfy the legal requirements relating to distinctiveness and the ability to distinguish their owner’s offerings from those of others. The US is different. It has two trade mark registers: the Principal Register and the Supplemental Register.
The Principal Register lists ‘strong’ trade marks, being those that the public immediately associates with the brand owner. These include fanciful words, such as ‘Kodak’ and ‘Pepsi’, that have no meaning other than in connection with the relevant goods. Trade marks on the Principal Register enjoy all the protection afforded by trade mark registration.
The Supplemental Register is intended to give weaker trade marks some degree of protection as the brand develops. It enables brand owners to register marks that are, for example, descriptive or geographical, but that can acquire distinctiveness over time, at which point they can apply to be transferred to the Primary Register. Examples of marks that started on the Supplemental Register include Bank of America and Hotels.com.
Brand owners with marks on the Supplemental Register do not have complete trade mark protection, but do enjoy some rights, including using the registered trade mark symbol and preventing third parties from registering confusingly similar trade marks. While the holder of a trade mark on the Supplemental Register can bring infringement proceedings in federal court, it is far harder to prove infringement than if the mark were on the Principal Register. Firstly, there is no presumption that the trade mark is valid, so you face the additional hurdle of showing that the mark identifies your business. Secondly, the mere fact that the mark is registered on the Secondary instead of the Primary Register can give rise to an argument that trade mark infringement is not made out, because your mark is, by definition, weak, and does not possess the required distinctiveness.
What classes of goods and services are covered under the US trade mark registration system?
The US trade mark system organises goods and services into 45 different classes. When applying for a US trade mark, you must specify the classes in which you require protection. For example, most clothing retailers select class 25 covering clothing and footwear. To achieve optimum brand protection, they may also need registrations in several additional classes, including class 35 covering retail and wholesale services, class 18 covering bags and class 40 relating to custom tailoring.
You must select the correct trade mark classes since they define the scope of protection your mark will provide. Our expert trade marks solicitors, working closely with our carefully selected US trade mark attorneys, can help with this.
How to register a trade mark in the United States
When registering a US trade mark, you have two choices: Registering your mark with the USPTO and obtaining a federal trade mark, or registering your trade mark in specific US states.
Registering your trademark in specific states creates rights in that state only, whereas a federal trade mark provides country wide protection. Most UK businesses opt for the more comprehensive federal trade mark.
A general overview of the procedure for registering a federal trade mark is as follows.
- Decide on the appropriate filing system
The US is a member of the Madrid Protocol, an international trade mark filing system through which applicants can obtain trade mark protection in up to 130 countries through a single application. The Madrid Protocol offers various benefits, most notably speed and cost-efficiency. It does, have limitations, and is not suitable in every situation. Our trade marks solicitors will review your brand protection strategy and advise on whether the Madrid Protocol or a US-specific application is best.
- Prepare the application
All foreign trade mark applicants in the US must be represented by a US trade mark attorney. Our trade mark solicitors have longstanding relationships with many leading US intellectual property law firms, and will ensure your chosen attorney has the right skills and experience for the job.
US trade mark law and practice is particularly strict regarding the classes of goods or services you select, and the depiction of your trade mark, whether that be by way of words, shapes, colours or any other type of representation. Your application must accurately portray your trade mark and carefully describe the goods and services you require protection over. You cannot materially alter your trade mark once you have submitted your application, so it’s important to get it right.
- File the application
US trade mark law differs somewhat from the UK when it comes to the filing stage. In the US, you must specify the basis upon which you are permitted to register your mark. This is known as the ‘filing basis’, and there are multiple bases upon which you can rely. The most common for US businesses are ‘intent to use’ and ‘use in commerce’. UK businesses with UK trade marks can often rely on those registrations, and file on the basis of an existing foreign mark. - Filing on a use in commerce basis
Filing on a use in commerce basis essentially requires you to prove that you use your mark in commerce. You must submit a specimen to prove your use and give the date you first used the mark in interstate trade. - Filing on an intent to use basis
As its name suggests, filing on an intent to use basis indicates that you have yet to start using your mark in the US, but intend to do so soon. In essence, you are simply reserving the mark to use later. When you start using your trade mark, you must complete the application process and pay an additional fee to achieve registration. You have an initial 6-month period to do so but can obtain extensions on payment of additional fees. - Filing on the basis of a foreign trade mark
Relying on a foreign mark is usually the preferred choice for businesses with a UK registered trade mark since you do not need to prove use of your mark in America to obtain a US registration. You can apply for your US trade mark based on either an existing UK registration, or on the back of an application for a UK mark. Your proposed US mark must be identical to your UK registration, but once your US application is accepted, it becomes an entirely separate trade mark. You must prove your use of the mark in the US within 5-6 years of registration.
- Review
Upon receipt of your application, the USPTO will review it to confirm its compliance with US trade mark law. This process involves the examiner searching for any prior marks that may conflict with yours and carefully checking your written application, including the details of goods and services applied for, and checking any drawings and specimens provided.
If the examiner objects to your application, they will contact you to explain why. If you cannot successfully defend your application, it will be refused.
If the examiner is happy with your application, or if you successfully address any concerns raised, the USPTO will publish your mark in the ‘Official Gazette’. Any third parties who object to your mark may then raise an opposition within 30 days.
- Oppositions
A third party can oppose your mark for various reasons. For example, they may allege a likelihood of confusion between their mark and yours, or they may believe that your mark merely describes the goods or services you offer – ‘Cold and Creamy’ for ice cream, for instance.
Opposition proceedings go through several stages including pleadings, discovery and deposition, and are overseen by the US Trademark Trial and Appeals Board. If the opposition succeeds, your application will fail. The vast majority of oppositions are settled between the parties, and the USPTO is usually willing to put an opposition on hold for as long as the parties wish to negotiate.
- Registration
If your application receives no opposition, or if you successfully defend any opposition, your mark will be registered, and you will receive a certificate of registration.
How much does it cost to register a US trade mark?
Filing fees for US trade marks are more complicated than in the UK. While you must pay a fee for each relevant class of goods or services in both jurisdictions, in the US, you have a choice of 2 types of filing, known as TEAS Standard or TEAS Plus. TEAS stands for ‘Trademark Electronic Application System, the USPTO’s electronic filing service.
A TEAS Plus application is the cheaper option, costing $250 per class at the time of writing. It has more up-front requirements than a TEAS Standard application, which costs $350 per class at the time of writing.
Our trade marks solicitors, working closely with your US attorneys, will advise which filing option is best for you.
In addition to these initial fees, you may need to pay additional fees depending on the filing basis you choose. You will also need to pay your legal team’s costs.
How long does the US trademark registration process normally take?
It takes significantly longer to register a US trade mark than a UK one. In the UK, a straightforward mark that received no opposition can be registered within around 3-4 months. In the US, the timescale is 12-18 months.
Is it possible to expedite the US trademark registration process?
The USPTO deals with trade mark applications in the order they are received, and it can take many months for your application to be reviewed. You can ask the USPTO to expedite your application using a ‘petition to make special’.
To succeed in a petition, you must have special reasons for needing your application to be dealt with quickly. Often, applicants cite pending litigation, third party infringement or the need to obtain a foreign trade mark. In the absence of such circumstances, the USPTO is unlikely to grant your request.
How long does a US trade mark last?
A federal trade mark lasts for an initial period of 10 years but can last indefinitely if properly maintained.
Renewing your US trade mark
Maintaining a US trade mark is more onerous than maintaining a UK registration. Both jurisdictions require that you renew your mark every ten years, but the US has additional requirements that must be satisfied to retain the mark. For example, you must file periodic declarations confirming your use of the mark in commerce. We will help you with this and ensure your registrations are up to date and current.
Summary
Brand protection in the US is crucial in ensuring success across the pond. despite the cultural similarities between the 2 countries, the US and UK trade mark systems are entirely distinct and, in many respects, different from each other. When devising a US brand protection strategy, it is crucial to work with professionals who not only understand your business, but also have experience in US trade mark law and procedures. Our trade marks solicitors work closely with an extensive network of American agents to help our UK clients realise their US goals and achieve maximum brand protection for the lowest possible cost.
