International Clients – US Trademark Protection

Grant’s Law Firm is dedicated to providing information to intellectual property practitioners throughout the world, with specific emphasis on the unique requirements of protecting foreign intellectual property within the United States of America.

U.S. Trademark Law for the International Client
As one of the world’s largest marketplaces, the United States is a desirable market for goods and services from around the world. Fortunately for international clients, achieving trademark protection for your products and services is very feasible for everyone. There are a number of general procedures, and a few special rules that apply to international clients. The following information is intended for general information purposes only. Please contact a qualified United States trademark attorney for specific legal guidance.

Unlike in most countries, agents and attorneys cannot file trademark applications in the United States based on a simple letter of instruction. The applications are comparatively detailed and must be signed by the applicant.

Who Can File for a U.S. Trademark?
One does not need to be a United States citizen, or even to reside in the United States, to apply for a U.S. trademark. Applications may be made by individuals, partnerships, or corporations, or certain other business associations. If the applicant does not reside in the United States, the applicant must appoint a domestic U.S. representative, who may be any person residing in the United States. As this person serves as a legal representative to receive any notices or court papers that may be served for proceedings affecting the mark, it is vital that this domestic representative be available to handle legal correspondence concerning the mark. Generally, most international applicants will appoint a U.S. trademark attorney as their domestic representative. The United States Patent and Trademark Office must be kept informed, in writing, of any changes in correspondence address that occur during the application process.

What Is A Trademark Search?
Since the purpose of allowing U.S. federal trademark registration is to prevent new trademarks from causing confusion with currently registered marks, it is not surprising that the United States Patent and Trademark Office will not register a mark that is the same, or too close, in sound or appearance, to an already registered mark. A very difficult area of U.S. trademark law is determining just when a proposed mark is “too close” to an existing mark to allow a new registration. Two basic factors intersect in this determination. First, is the mark itself confusingly similar to an existing mark? Second, are the goods or services to be marketed under the proposed mark so close to those of an existing business as to cause public confusion?

As a practical matter, this means that it is often times possible to have more than one business using the same trademark, if the nature of their goods or services is so different that consumers would not be confused as to the difference between the two businesses. Therefore, we must look both to appearance and to the type of business to determine the likelihood of successfully applying for a U.S. trademark.

The first step in making this determination is to conduct a trademark search. Since trademarks do not need to be federally registered to have at least some legal effect in the United States, it is necessary to do a reasonably wide ranging search.

The following marks are considered unregistrable:

  • a mark confusingly similar to one already registered or used in the United States;
  • utilitarian configurations or features;
  • generic names;
  • immoral, deceptive or scandalous matter;
  • matter which disparages or falsely suggests a connection with a person, institution, belief or national symbol;
  • flags, coats of arms or insignias of the United States or any other nation or state; and
  • the name, portrait or signature of a living individual without that person’s written consent (or President within the lifetime of his widow without consent).

Marks which are merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or primarily surnames may only be registered if they have become distinctive of the products or services for which they have been used.

What Are “Classes?”
Since one the most important factors the United States Patent and Trademark Office considers in its evaluations of proposed marks is the likelihood that consumers will be confused by similar marks, the Trademark Office looks at the nature of the goods or services sought to be offered under the mark. As an aid in analyzing this issue, existing trademarks are organized into the International Schedule of Classes of Goods and Services, which consist of 34 classes of goods and 11 classes of services.

What Is A “Basis” For Filing A U.S. Trademark Application?
The United States permits four different types of trademark applications, which generally may be combined in the same application (though one application may not claim both actual use and an intent to use a mark with respect to the same goods and services).

(1) Use-based Trademark Applications are founded upon prior, continuing use in United States commerce.

“Use in commerce” is the easiest to understand, and means that the mark is already being used in any form of bona fide commerce that the United States Congress may lawfully regulate. This includes interstate commerce, that is, commerce between different states, territories, or possessions of the United States; or international commerce between the United States and another country. Bona fide commerce is the type of business operation that would be expected to take place in the normal course of business for a product or service of the type being offered for registration. Sham transactions or transactions made only in an attempt to secure rights will not be recognized.

If the mark is already being used in commerce, one may file based on that use. A “use incommerce” application must include a sworn statement that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. The “use in commerce” application must include a specimen.

(2) Intent-to-use (“ITU”) Applications must be based upon a bona fide intention to use the mark in U.S. commerce.

“Intent to use” means that while the applicant has not already started using the mark in commerce, they have a bona fide intent to begin doing so. After a Notice of Allowance is issued for the mark, the applicant is given six months to file a supplementary Statement of Use showing actual use in commerce. “Intent to use” filing can have significant advantages for the applicant, as it allows one to reserve a trademark before actually bringing the goods and services to market.

The mark is not formally registered until the mark is actually used in commerce. It is important to note that, at that time, additional documentation is required and an additional fee is paid to convert the “intent to use” into a “use in commerce” application. If the introduction of a new product or service is delayed beyond the six month time period, it can be possible to have this time limit extended for up to an additional thirty months. An experienced United States trademark attorney can give you guidance in this area.

(3) If the same mark previously registered in its country of origin if that country is a Paris Convention member) and is otherwise eligible for registration in the U.S., registration will be permitted upon the filing of a certified copy of the home registration, an English language translation thereof by one who swears that he or she is familiar with the original language and with English, and the applicant’s allegation of a bona fide intent to use the mark in U.S. commerce (although making such use is not a prerequisite to registration). Not all goods or services for which the mark is registered abroad need be covered by the U.S. application, but no goods or services may be added. U.S. standards for identification of goods or services often require substantial changes in the translated description of the goods or services for which the mark is registered abroad.

The U.S. application may, but need not, be combined with either a Use-based or an Intent-to-use application (in the latter case, registration on the Intent-to-use basis may not issue until after the applicant has filed a declaration that it has begun using the mark in U.S. commerce).

(4) Registration of a mark by the owner of a pending home country application also is allowed, provided the applicant is willing to allege a bona fide intent to use the mark in U.S. commerce (although making such use is not a prerequisite to registration). U.S. registration, however, may not be obtained until the home country registration has been issued. The same rules outlined in subsection (c) above apply to the identification of goods and services.

The United States Patent and Trademark Office allows for two different “bases” for filing an application; “use in commerce” and “intent to use.”

Can International Registrations Be Recognized In The United States?
Prior international registrations can confer advantages in applying for a U.S. trademark. The United States is a member of the Paris Convention for the Protection of Industrial Property of 1883 and subsequent revisions to that treaty agreement, the Inter-American Convention for Trademarks and Commercial Protection (also known as the “Pan-American Convention”), the Buenos Aires Convention for the Protection of Trade Marks and Commercial Names, the World Trade Organization, and certain other treaties and agreements.

The United States is not a member of the Madrid System for the International Registration of Marks, which provides an international trademark register, administered by WIPO, for member countries.  Thus, registrations issued under that agreement are not acceptable as a basis for registration in the United States.

Section 44 of the Trademark Act, 15 U.S.C. §1126, implements these agreements.  Section 44 applications fall into two basic categories:  (1) United States applications relying on international applications to secure a priority filing date in the United States under §44(d); and (2) United States applications relying on ownership of international registrations as a basis for registration in the United States under §44(e).

To be eligible for a priority filing date under §44(d), an applicant’s country of origin must be a party to an international treaty or agreement with the United States that provides a right of priority, or must extend reciprocal rights of priority to United States nationals; and the international application that is the basis for the priority claim must be filed in a country that is a party to a treaty or agreement with the United States that provides a right of priority, or must extend reciprocal rights to priority to United States nationals. An application under this section must be made within six months of the filing of the international application. A qualified U.S. trademark attorney will be able to provide current information on countries that exist in such relationships with the United States.

To be eligible for registration under §44(e), an applicant’s country of origin must either be a party to a treaty or agreement with the United States that provides for registration based on ownership of a international registration, or extend reciprocal registration rights to nationals of the United States; and the applicant must be the owner of a valid registration in the applicant’s country of origin.

An international applicant may seek registration in the United States based on either (a) a valid CTM registration, or (b) a CTM application, with a right of priority if the United States application is filed within 6 months of the date of the first filing of the CTM application.

Under appropriate circumstances, an application may be filed under both §44(d) and §44(e). A registrant must be the bona fide owner of the mark, and applications may be filed on either a “use in commerce” or “intent to use” basis. As with any international holder of a U.S. trademark, the registrant must appoint a domestic U.S. representative to receive notices and legal process regarding the mark.

What Is A “Specimen?”
Applications made on a “use in commerce” basis must include an actual example of how the mark is used in commerce or in connection with the identified goods and/or services. This is not the same as the drawing of the mark, which represents the mark as claimed.

A specimen for a mark used on goods normally shows the mark on the actual goods or packaging for the goods. This may be a tag or label from the goods; a container for the goods, a display associated with the goods, or a photograph that shows use of the mark on the goods. The actual product is not submitted. It is very important to note that invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead stationery, and business cards are generally not acceptable as specimens for goods.

A specimen for a service mark must show the mark used in the sale or advertising for the services. This is significantly different from the rules concerning specimens for trademarks, where advertising type materials are generally not allowed. A specimen for a service mark may consist of a sign, a brochure about the services, an advertisement for the services, a business card or letterhead stationery showing the mark in connection with the services, or a photograph showing the mark as used in rendering or advertising the services. The specimen must make reference to the type of services rendered on the specimen, and not just a depiction of the mark itself.

Since it is, by definition, representing goods or services not yet placed in commerce, an application filed on an “intent to use” basis does not require a specimen, although a specimen will later be required.

Applications based solely on an international application or registration under §44 do not require specimens. However, specimens are required if alleging either actual “use in commerce” or “intent to use.”

Specimens can be filed electronically or as paper copies. One specimen must be supplied for each class of goods or services listed in the original application. Choosing the proper specimen to submit with an application is important. An experienced Untied States trademark attorney can give you guidance in this area.

How Long Do U.S. Trademarks Remain in Full Force and Effect ?
As long as they are used in bona fide commerce, it is possible to extend U.S. Trademarks indefinitely. However, very close attention must be paid to their proper use and maintenance.

First, renewal fees must be paid. A new mark needs to be renewed between the fifth and six years and then every ten years after grant.

Second, the mark must be continuously used in commerce in the United States. While petitions to excuse non-use of a mark are sometimes granted, the general rule is that a mark must be kept in bona fide use in commerce in order to stay active.

At the time of renewal, non-residents of the U.S. must designate a domestic U.S. representative, similar to the designation made at the time of filing, to receive legal notices and process in the United States.

Timely renewal is very important. While there is a short grace period for renewal, renewals made after the grace period are not accepted and the mark will be deemed abandoned.

Contact a lawyer providing International Trademark Legal Services for international clients.

©2017 Grant's Law - Patent and Trademark Attorneys
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