In our globalized economy, companies of all sizes from all over the world want to register a U.S. trademark to secure their intellectual property in the United States. This is due to several reasons, such as your company is already offering goods and services in the U.S. or is planning to do so and wants to secure its mark beforehand.
In this article, we clarify how foreign companies and individuals can register a U.S. trademark. You will learn about the requirements for registering a U.S. trademark as a foreign entity. We will outline how the international legal framework for trademarks is organized and walk you through the U.S. trademark application process.
Can a foreign company register a U.S. trademark?
In short, anybody can file an application for a U.S. trademark from anywhere in the world. However, there are a number of rules and prerequisites that applicants must fulfill before an application successfully becomes a registered U.S. trademark.
Assistance from a licensed U.S. attorney is now mandatory
Since August 2019, companies and individuals domiciled outside of the U.S. must hire a licensed U.S. attorney to file trademark applications with the United States Patent and Trademark Office. This rule affects every company and individual outside the U.S., including Canadian applicants who were initially not bound to the rule. The requirement not only refers to the application process but also to trademark renewals, assignments, various document filings, and even simple address changes.
This rule aims to improve the accuracy of applications and helps to prevent fraudulent submissions to the USPTO. As the trademark registration process is a complex endeavor that goes far beyond filling out a form, hiring an attorney should be seen as a helpful requirement, rather than a hurdle. There are several legal decisions that must be made prior to and throughout the application process, as well as for maintaining the trademark registration over time, and having a licensed attorney to consult will make these decisions easier.
An experienced US trademark attorney helps you navigate through the trademark application process, which includes back-and-forth correspondence with the USPTO and overcoming issues that may arise during the registration process.
The international legal framework for trademarks
Before going through the steps of applying for a U.S. trademark, we want to give clarity on how the international legal framework for trademarks is organized. This should help you make an informed decision before filing a trademark application.
The most common misconception about international trademarks is that you can apply for a single trademark and receive protection worldwide. Unfortunately, this is not the case. Trademark rights are generally distinct in each country or jurisdiction in which they are obtained. As such, each jurisdiction organizes and protects trademark rights according to its policies. This concerns the arrangement and enforceability of these rights in each jurisdiction. An exception from this is the European Union, where a trademark registration in one country automatically protects your trademark in all member states.
The international legal framework for trademarks comprises national and regional laws and the treaties administered by the World Intellectual Property Organization (WIPO).
The Paris Convention
The Paris Convention for the Protection of Industrial Property is an initiative of harmonizing intellectual property protection among the 179 member countries. The international treaty seeks to grant citizens of each country of the Union the same advantages with respect to intellectual property protection and enforcement within the national law of any country of the Union.
The Convention provides a right of priority which means that an applicant for a trademark in one country can apply for trademark protection in another member country within six months. Both applications in the different member countries will be regarded as if they had been filed on the same date. That gives the applicant protection from other applications for the same mark within that six-month timeframe.
The Madrid Protocol
As a foreign entity, you can apply for a U.S. trademark under the Madrid Protocol which the WIPO administers. The Madrid Protocol is a filing treaty that allows trademark holders to protect their marks in multiple countries through one application, in one language, and in a single currency. While this approach can be a cost-effective way of registering your mark in several countries, this option should be weighed carefully as it has a number of downsides.
Applications for a U.S. trademark are highly specific compared to other countries with respect to the goods and services offered, as well as the classes used to designate them. The differences between country requirements can quickly create problems when filing a U.S. application through the Madrid Protocol. A direct filing with the USPTO that meets the specific requirements of a U.S. trademark application can have a greater chance of success.
In case the original application of the Madrid Protocol filing gets defeated for all countries in which it is protected, also referred to as “central attack”, all the trademark protections granted by the Madrid Protocol are canceled. Applicants can restore their trademark protection by going through the application process of each country. However, this is a costly and daunting process that would have been circumvented by applying directly through the USPTO.
In case issues arise during the registration process in any of the countries you wish to register your mark, you will have to hire a local attorney that helps solve the issue. This can quickly happen in the U.S. due to the stringent national trademark law. The bottom line is that the Madrid Protocol only streamlines the application process, but ultimately, you will still need to hire a U.S. attorney to respond to Office Actions. Your application is likely to receive these Office Actions, due to the complexities of the U.S. trademark application compared to other countries. Because of this, filling your U.S. trademark application through the Madrid Protocol is usually not easier than filing directly with the USPTO through a U.S. trademark attorney.
How to apply for a U.S. trademark through the USPTO
If your main goal is to register your mark in the U.S. rather than registering it in multiple countries (members of the Madrid System) through one application, you can increase your chances by filing directly with the USPTO. In the following, we give you an overview of what you need to know before you file your trademark application.
Registering your U.S. trademark as a foreign company or individual goes beyond filling out the application form. Your licensed U.S. attorney will help you make the required legal decisions before filing the application and will guide you through the registration procedure.
1. Conduct a trademark search.
Before you start the application process, it is important to conduct a trademark search. The purpose of this search is to make sure that the mark you intend to register is unique and has not already been registered by someone else. What you can do is create different versions of your mark which gives you the flexibility to resort to another version in case your preferred mark is too similar to a trademark that is already registered.
2. File your trademark application.
Once you have completed the trademark clearance search, you are ready to fill out the application form. This is usually done through the digital USPTO’s filing system, the Trademark Electronic Application System (TEAS).
During the application process, you have to describe the goods and services your trademark will represent. When doing so, you should think about the products that you are offering now or plan to offer in the future. The key is to include goods and/or services that you are actually already selling, or, have a “bona fide intent to sell” in the United States.
3. What happens after the application has been submitted?
The current processing wait time for new trademark applications is 10 months or even more. This is due to a dramatic surge in trademark application filings in recent years and is why you should file your U.S. trademark application as soon as possible. Your filing date, also known as a priority date, will give you protection from other applications for the same or similar mark that may be filed after yours.
It is important to file the application completely and correctly to avoid setbacks and time delays in the registration process. In case the USPTO identifies anything in the trademark filing that goes against the established criteria, the USPTO will issue a so-called Office Action that pauses the application process until the issue is solved. Applicants have to respond to an Office Action within three months, otherwise, the application will be considered abandoned. You can request a one-time extension from the USPTO for $125. The extension must be requested before the initial deadline and will give you an additional three months to respond to the Office Action. Your attorney can give you legal advice if an Office Action is issued on your filing and ensure that your trademark application moves through the process smoothly.
4. Maintaining your U.S. trademark registration.
Once your U.S. trademark registration has been issued, you have to actively maintain it. To ensure that your federal trademark registration stays valid over time, you have to continuously use your trademark in commerce, file trademark maintenance documents, and keep your correspondence information updated.
Another important part of maintaining your U.S. trademark registration is trademark monitoring and enforcement. As a trademark owner, it is your responsibility to ensure that your mark is not being infringed upon, as the USPTO does not monitor this for you. If you find any infringement, you should work with your attorney to ensure that your rights in the mark are enforced.
The different filing bases for a U.S. trademark application
There are a number of filing basis options that one can use when applying for a U.S. trademark registration. The filing basis you use for your U.S. trademark application depends upon the individual situation of your company.
a. Actual use
Trademark applications based on use-in-commerce are applicable for marks that are already used for goods and services offered to U.S. customers. Applicants must prove that their mark is actively used alongside their goods and services. Valid evidence can include a product label or packaging.
If you haven’t used your trademark in the U.S. but have a bona fide intent to do so, you can file an intent-to-use application. The registration is not complete until actual use is proven within six months. Applicants can also file a Request for Extension of Time to File a Statement of Use up to five times. The original filing date will be maintained for protection.
c. Foreign Registration
If you already have a registered trademark in your home country, you can use that registration as a basis for registering the same mark in the U.S. This can streamline the application process and increase the chances of approval. Applicants need to submit a certified copy and a translation of the registration in the applicant’s country of origin.
d. Foreign Application
It is also possible to base a U.S. trademark application on the trademark application in your home country. To obtain a priority date in the United States that matches the filing date of the foreign application, the U.S. application must be filed within six months of the filing of the foreign application. Eventually, the foreign application needs to be transferred into a registration.
Registering your trademark in the U.S. protects your intellectual property in the world’s largest economy. If you want to expand your business into this market where an enormous number of companies compete for customers, a registered trademark helps build and strengthen your brand reputation. Your trademark will also protect you from infringers if you actively maintain and enforce your trademark.
We have seen that registering a U.S. trademark as a foreign company or individual is a complex endeavor that entails numerous legal decisions and continuous work. However, once registered, your trademark adds significant value to your business.
At Gerben IP, we can help you file a trademark and obtain a U.S. trademark registration regardless of your current location. Contact one of our trademark attorneys today and learn more about how we can help.