Navigating the United States trademark filing system can be a daunting task for companies from the European Union or United Kingdom. This is because the information required by the United States Patent and Trademark Office is typically more stringent than the trademark offices in the EU and UK.
The following article discusses three main issues that EU and UK businesses must consider to ensure smooth(er) sailing through the US trademark application process.
1. Trademark Clearance in the United States
Before filing for a US trademark application it is imperative to know what trademark rights may exist in the US that would conflict with the desired trademark. Although the U.S. Patent and Trademark Office’s (USPTO) Trademark Electronic Search System (TESS) is available to search for trademark applications and registrations, this is not a comprehensive list of potentially conflicting marks. A U.S. trademark attorney can conduct a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks to gauge the risk associated with filing an application for a certain trademark.
One of the key differences in the United States from many other countries around the world is that U.S. trademark law recognizes “common law” rights, meaning a trademark owner may have protected legal rights in a trademark just by using the trademark in the marketplace (and not registering it). Because the trademark is not registered, it would not appear in the USPTO’s TESS database. With this in mind, if an applicant were to unknowingly file for a mark already in use, but unregistered by another business, the applicant’s application could be compromised if the prior user were to challenge it.
Lastly, the USPTO considers sight, sound, meaning and overall commercial impression when analyzing a trademark for registration. An exact search of the TESS database will not provide a comprehensive assessment of the marks that an USPTO examining attorney may flag as confusingly similar to an applicant’s mark.
2. Trademark Ownership Considerations for EU and UK Companies
In the U.S., the owner of a trademark must be the applicant of the trademark registration. Whether to file in the name of a business, holding company, or personal name is a decision to be made based on legal analysis. If an international applicant files for a mark using the wrong ownership information (i.e., the CEO’s name was included in the application, rather than the name of the corporate entity itself), this could significantly delay the registration process, or worse, result in a mark never receiving a registration or a registration that is invalid.
Of particular importance is assessing the distinction between a parent company and its subsidiary to determine the appropriate owner of the mark. Typically, the recommended and proper owner of a trademark should be the parent company, however, making this determination depends on assessing which entity demonstrates actual ownership and control over the marks.
A good rule is making sure the business entity that is listed as the owner of a trademark is entity that uses the mark in connection with the requisite goods or services and demonstrates quality control over the mark. If the listed owner of a trademark application is not the operating entity then a licensing agreement must be put in place between the trademark owner and operating entity.
3. Identification of Goods and Services: Differences between the EU, UK and United States Trademark Application Requirements
U.S. trademark law requires that all goods and services listed within an application are either currently “in use in commerce” at the time of filing, or, the applicant has a bonafide intent to use the mark in commerce in connection with all the goods and services listed within the application.
A common issue faced by companies from the UK and Europe is the inclusion of overly broad or vague language to describe an company’s goods or services in a U.S. trademark application. While this type of language is acceptable under UK and European Union trademark law, U.S. trademark law requires an applicant to adequately define the nature and function of its goods or services. A misunderstanding of this requirement often leads to delays in the processing and registration of a U.S. trademark application, and, additional costs to bring in a US trademark attorney late in the process.
Improperly filing a U.S. trademark application could cost a company from the European Union or United Kingdom significant delays during the process. If a United States trademark attorney is brought in to file the trademark application many of these issues will be dealt with before the application is ever filed. This allows for a faster, and, many times less expensive, US trademark application process for companies from the UK and EU.