A United States trademark registration provides valuable protections to businesses wishing to do business in the U.S. These are the 5 steps to registering a U.S. trademark as a European Union based business:
- File your trademark application in the European Union first.
- Engage an experienced U.S. trademark attorney.
- Conduct a comprehensive search of your mark.
- File your application, either directly with the USPTO or through the Madrid Protocol.
- Maintain your trademark registration.
1. File in the European Union First
If you haven’t yet begun the process to register your trademark in the EU, do this first. Once you’ve submitted your application in the European Union, you should then submit your application to the United States Patent and Trademark Office, or USPTO, within six months. Doing this will allow you to use the priority date of your EU application in the United States as well. Anyone looking to register a similar trademark in the U.S. after that date will likely not be approved. To learn how to register a trademark in the EU, click here.
In addition to using your EU priority date, registering first in the European Union has another important benefit. Typically, the USPTO requires that your trademark be “in use in commerce” within the United States in order to receive approval. However, trademarks that have been registered in another country are not required to document use immediately. If your trademark has been registered in the EU, the USPTO will allow the same mark to be registered in the United States on the basis of your foreign registration.
2. Engage a U.S. Based Attorney
The USPTO has recently made significant changes to U.S. trademark law. As of August 2019, all foreign applicants are required to hire a trademark attorney based in the United States. Any business or individual that has a principal place of business or permanent legal residence outside the United States is considered ‘foreign’ by the USPTO. You can still submit a basic application yourself, but you will not be able to respond to any Office Actions issued by the USPTO without a US-based attorney.
While it is required by law, working with a U.S. based trademark attorney is extremely beneficial as well. Trademark registration is a very detailed legal process, and even if you have experience with the process in the European Union, you will likely benefit from working with an experienced trademark attorney, before, during, and after the registration process. From conducting a comprehensive trademark search to drafting your application and monitoring your mark’s use, your attorney will work on your behalf as you continue to grow and expand your business outside the European Union. Contact a U.S. trademark attorney today to begin the process of registering.