The 4 Steps Needed to register a U.S. trademark as a U.K.-based business:
- File in the United Kingdom first
- Hire a U.S.-based trademark attorney
- File your trademark application (either through the USPTO or the Madrid Protocol)
- Meet USPTO deadlines
1. File in the United Kingdom First
Before you begin the process to register your trademark in the United States, you should first file your mark in the U.K. where your business currently exists (learn about costs). Once your application is filed with the U.K. Intellectual Property Office, file your application with the United States Patent and Trademark Office (known as the ‘USPTO’) within six months. This will allow you to use the priority date of your UK application in the United States as well.
Another reason to register your mark first in your home country is the matter of “use in commerce.” In the United States, a trademark must be “in use in commerce” to be registered unless there is a registration in another country for the same trademark. Therefore, if you own a UK registration, the US trademark can be registered prior to any actual “use in commerce” of your trademark in the United States. Then, once your US trademark is registered, you would have five years to begin offering your product or service within the United States.
2. Hire a U.S.-Based Trademark Attorney
As of August 2019, the USPTO will now require all foreign trademark applicants to be represented by a U.S. attorney. While you can still file an initial basic application on your own if you file through the Madrid Protocol, you will not be able to respond to any Office Actions issued by the USPTO until you are represented by a U.S. based attorney. The USPTO considers an applicant ‘foreign’ if the business or individual has a permanent legal residence or a principal place of business outside the U.S.
While hiring a United States trademark attorney is required, it is also extremely beneficial. Your trademark attorney will first complete a comprehensive trademark search, to ensure your mark isn’t already in use within the U.S. A trademark application will also be drafted with the correct International Classes, in order to obtain the broadest protection possible. Most trademark attorneys will reply to non-substantive Office Actions on your behalf, which saves you valuable time so you can continue to focus on growing and expanding your business to the U.S. Once your trademark is registered, your trademark attorney may also offer monitoring services, to notify you if your mark is being used without your consent. You can then work together to determine the best legal action to move forward against the possible infringement.