4 Steps to Register a United States Trademark as a U.K. Business

By Josh Gerben, Esq.

The 4 Steps Needed to register a U.S. trademark as a U.K.-based business:

1. File in the United Kingdom first
2. Hire a U.S.-based trademark attorney
3. File your trademark application (either through the USPTO or the Madrid Protocol)
4. 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.

3. File your Trademark Application

Once you’ve hired a U.S. based attorney, you can move forward with submitting your trademark application.  When filing an international trademark application, you have two options.  The first is to file directly with the country’s trademark office.  In this case, that is the USPTO.  Applications filed directly with the USPTO are typically more detailed, and therefore, often require less back and forth communication through Office Actions issued by the USPTO.

Foreign business owners looking to file in many countries may choose to do so through the Madrid Protocol.  This international treaty allows you to file a single application, in your home language, which can then be sent to any of its over 90 member countries.  While certainly streamlined, this process might slow the process, as the USPTO may ask for additional information through Office Actions.  It is also important to note that using the Madrid Protocol to file your application does not guarantee you’ll be approved in the U.S.  Those decisions are still made on a country-by-country basis.

4. Meet USPTO Deadlines

During the course of the application process, the USPTO will likely issue Office Actions.  These can be issued to request additional documents, get clarification, or, in some cases, notify you of rejection.  It is important to know the deadline for these Office Actions and to respond to the USPTO before the deadline passes.  Failing to do so could cause your trademark application to be canceled.  Fortunately, working with a U.S. trademark attorney will help you to respond to these Office Actions appropriately, and in a timely manner.

After your trademark has been registered by the USPTO, it won’t expire, as long as you continue to use the mark and meet renewal deadlines.  For new trademarks, the first renewal deadline will occur between five and six years after the date of registration, then again between the ninth and tenth year.  After that, renewals will occur every ten years.  It’s vital to keep track of these deadlines and begin the process to renew well before the date approaches.  Failing to meet renewal deadlines issued by the USPTO could cause your trademark to be canceled.

U.S. Trademark Registration for U.K. Businesses

Whether you plan to start doing business in the United States next year, or you are currently reaching customers within the U.S., the time to consider a United States trademark registration is now.  If you haven’t already done so, begin by registering in the United Kingdom.  This will become a strong basis for your U.S. trademark application, and, if followed up by a U.S. application within six months, could lock in your priority date.  Next, hire a U.S. trademark attorney and file your application, either through the USPTO or the Madrid Protocol.  Then, be sure to meet USPTO deadlines for Office Actions, and, after registration, renewal deadlines as well.  A United States trademark registration is a valuable tool to protect your business, so consider starting the process today.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.