US Trademark Registration for Clients From Around the Globe

U.S. Trademark Registration for Brands Based Outside of the U.S.

If you are a citizen or company domiciled outside the United States but doing business inside the United States, it’s important to protect your brand with a U.S. trademark registration. As trademark attorneys, we know that registering a trademark in the U.S. may seem complicated – so we’ve broken down the registration process and shared a few tips to help you secure a U.S. trademark registration for your foreign-based brand.

The U.S. Counsel Rule

Most importantly, you should know that the USPTO’s Foreign Counsel Rule requires individuals and businesses “domiciled” outside of the U.S. to hire an attorney who’s licensed in the U.S. to complete certain aspects of the registration process. This means that you’ll need the assistance of U.S. counsel to perform certain tasks for you, like responding to Office Actions (USPTO-issued requests) or submitting filings with the Trademark Trial and Appeal Board. Check out this blog post for more on the U.S. Counsel Rule.

The Registration Process

From start to finish, it typically takes about a year and a half to obtain a U.S. trademark registration. Here’s an overview of the process:

Step 1 – File Your Application: The U.S. trademark registration process begins with the electronic filing of your application. All applications are available online at USPTO.gov. You’ll need to complete the proper application form for your brand, electronically file it, and submit payment of your filing fees.

Step 2 – Examination: 9-10 months after your application is filed, it will enter the examination stage of registration. In this stage, your application will be reviewed by a USPTO examining attorney to ensure that it satisfies the U.S. registration requirements and does not conflict with existing trademark registrations.

Step 3 – Opposition Period: If the examining attorney determines that your application is substantively sound and free of conflicts, your application will be deemed “initially approved” for registration. At this point, your application will be posted in the USPTO’s official publication, and third parties will have 30 days to challenge the registration of your mark. If your application is unchallenged or overcomes the challenge(s) against it, it will proceed to the final stage of registration.

Step 4 – Trademark Use: A prerequisite to trademark registration is the use of your mark in the U.S. marketplace, so you’ll need to file “proof” that you are using your mark in connection with your goods and/or services in the U.S. marketplace. This “proof” can be submitted in your initial application, or if your brand hasn’t launched in the U.S. when your application is submitted, you can make a subsequent filing to “prove” that you are using your trademark in connection with your goods and/or services in the U.S.

Brand owners with trademark registrations from other countries can submit a copy of your trademark registration certificate in their U.S. applications to initially satisfy the “trademark use” prerequisite to registration. Applicants who submit evidence of their foreign registrations are not required to “prove” that they’re using their trademark in the U.S. until their first renewal filing – 3 years after their application is registered.

Step 5 – Trademark Registration: If your application is approved by the USPTO during the examination period and you have satisfied the USPTO’s trademark use requirements, the USPTO will issue an electronic copy of your registration certificate. Your registration certificate can also be found online at tsdr.uspto.gov/.

Tips for a Smooth Registration Process

Tip 1 – Conduct a trademark search: Even if your brand is established overseas, your U.S. registration process should start with a comprehensive federal, state, and common law trademark search. At our firm, we utilize a software called Corsearch to do a sweep of federal and state trademark registries. Our trademark search also includes unregistered trademarks used by competitors in your business’s relevant market. This search will provide valuable insight into any potential issues with your desired trademark and inform your approach to registration.

Tip 2 – File your application with the USPTO directly: You can file your application directly with the United States Patent and Trademark Office or you can utilize the Madrid Protocol – an international filing system that allows you to file one application to apply for trademark registration in up to 128 different countries. Although you can obtain a U.S. trademark registration through the Madrid Protocol, it may be best to apply directly with the USPTO as the USPTO tends to have stricter trademark ID requirements than most other countries. To satisfy the USPTO’s requirements the language used to describe your goods and services in your application must be precise and correctly categorized based on the USPTO’s classification system.

Tip 3 – Work with a U.S. trademark attorney: Working with an experienced trademark attorney will help you avoid substantive and procedural mistakes that can cause the USPTO to request additional information about your application and delay the registration process. Additionally, your attorney will monitor your application as it progresses through the registration process. One of the most common reasons we see applications denied is for failing to timely respond to Office Actions.

Tips for Maintaining Your Registration

Tip 1 – Keep up with subsequent filing deadlines: After successfully registering your trademark, it’s important to ensure that you are taking the steps to maintain your registration. This means staying on top of your trademark renewals – which must periodically file in accordance with the USPTO’s set intervals. At Gerben, our services don’t stop once your trademark has been registered – we will track your registration, remind you when it is time to renew your registration, and prepare and file your renewal.

Tip 2 – Monitor the use of your trademark: You’ll also need to monitor the relevant marketplace where your goods and/or services are offered, to ensure that competitors are not infringing your mark and weakening your trademark rights. To help police the use of your trademark, we offer a monitoring service that sweeps the federal trademark database monthly to flag trademark applications that may conflict with your own.