Register Trademark in US

A trademark, which protects the brand name of a business can include a word, symbol, logo, or any combination thereof, used with respect to certain products and/or services.
Trademark protection is territorial and exists only within the boundaries of a country where the trademark has been filed. Entities looking at expanding their business internationally must ensure that their trademark is adequately protected in the respective countries where they intend to start their business.
One of the economically leading countries, the United States of America has its own Federal Law and respective State Laws pertaining to trademarks, and a centralised governing authority called as the United States Patent and Trademark Office (USPTO).

Why file a US Trademark Application? Benefits

TRADEMARK REGISTRATION IN THE US HAS ADVANTAGES LIKE:

Legal Ownership throughout all states in the US.
A USPTO trademark registration confers the highest degree of protection for a brand name.
Exclusive Usage Rights.
Right to refrain others from using your trademark.
The Trademark gets listed on the USPTO Trademark Database (Trademark Electronic Search System, or TESS).
Right to use the ® symbol.
A USPTO trademark registration increases valuation of the brand name as well as the business.
Rights to take legal action against infringers and counterfeits.
A USPTO trademark registration provides a legal authenticity to the brand and the business, which in turn would increase the customer base.
How to register a trademark in the US?

A DETAILED PROCESS

In order to file a trademark in the US, the following steps need to be followed and our panel of experts and US attorneys provide assistance in each of the steps.

US TRADEMARK SEARCH

A thorough search of the database for similar trademarks must be conducted prior to the filing. This gives a preliminary assurance that your trademark is not confusing or similar to an already existing mark and accordingly, also reduces the chance of objection on grounds of similarity and/or any third party oppositions.

IDENTIFICATION OF CLASS

Based on the description of the product or service as provided by your business, the exact class or classes from among the 45 Classes, need to be identified.

COMPREHENSIVE SPECIFICATION DRAFTING

The trademark specifications have to be carefully drafted to include all the products/services provided by the business, and the same should be as per the acceptable entries of the ID Manual provided by the USPTO.

TRADEMARK FILING BASIS (SEC. 1A, 1B, 44D, 44E)

This is a crucial step of the trademark filing process as the applicant is required to select the Filling Basis for the trademark application from among Intent to Use, Actual Use/Use in Commerce, Foreign application/Claiming priority (within 6 months from the filing date of the foreign trademark application) and Foreign Registration.

SPECIMEN OF USE

If the trademark is being filed claiming usage of the mark, corroborating and acceptable specimen of use (documents establishing the use) must be provided.

FINAL APPLICATION

Once the trademark application is filed, the applicant will receive the corresponding serial number provided by the USPTO.

How can we help in US trademark registration process? Why Startup Solicitors?

LEGAL ADVICE BASED ON THE US TRADEMARK SEARCH:

Besides just conducting a US trademark search, our expert panel also provides legal advice on the chances of objection/opposition by third parties. A trademark is not only the business identity, but also a valuable asset with quite a lot of financial investments, safeguarding the trademark at the very first stage of application becomes extremely vital.

IDENTIFYING THE CLASS OF PRODUCT/SERVICE:

We provide legal assistance in identifying the accurate class for the filing based on the products and/or services offered by your business.

For instance, manufacturing of cosmetics and its distribution (retail/wholesale) would not fall under one class, rather it would be two different classes.

US TRADEMARK FILING BASIS

We offer thorough understanding on the various US Trademark Filing Basis options available with the USPTO and provide the corresponding legal assistance to the applicant for choosing the appropriate US trademark Filing Basis. Not only that, we also offer comprehensive advice on the corresponding requisites for each Filing Basis, that need to be complied with.

SPECIMEN OF USE

The USPTO follows stringent norms regarding the specimen of use submitted for an application filed claiming use. Our expert panel of US attorneys provide insightful and illustrative advice on the appropriate and the acceptable specimen of use.

REGULAR UPDATES ON NOTIFICATIONS

Our team keeps a close watch on the day-to-day status of the trademark application, provides regular updates as and when any office action is issued or if there are any intimations from the USPTO, and the further course of action.

US TRADEMARK MAINTENANCE

Our obligation towards your trademark does not end with its successful registration, and we offer all US Trademark Maintenance services, which have been detailed on this page.

Trademark Prosecution Stages

FILING OF TRADEMARK APPLICATION

Once a trademark application is filed with the USPTO, an official filing receipt along with the serial number is issued. The real-time status of the filed trademark can be tracked at http://tsdr.uspto.gov/ using the serial number.

TRADEMARK EXAMINATION

A trademark examiner or a trademark attorney scrutinises the trademark for basic required application details related informalities and/or for substantive grounds of objection (similarity with other marks and/or descriptive of the applied trademark, etc). To read more about the descriptive of a trademark, kindly refer to the FAQs at the end of this page.

TRADEMARK OFFICE ACTION-

If any informality and/or substantive ground of objection is found during the examination, an Office Action notice is issued. The applicant has 6 months time period to file a reply to the Office Action and remove the respective informality and/or respond to why the substantive ground of objection must be waived.

PUBLICATION OF THE TRADEMARK

In the event of no informality and/or objection, or once a response to the Office Action has been filed and the same is duly accepted by the Examiner, the trademark application shall be approved for publication in the respective Trademark Official Gazette. A prior Notice of Publication shall be issued by the USPTO stating the date of the publication of the trademark application.

TRADEMARK OPPOSITION PERIOD

Within 30 days from the date of publication of the trademark application in the Trademark Official Gazette, any third party who feels that the said trademark should not be registered as it is similar to the respective party’s mark and/or may cause commercial or economic harm to the said party, may file an opposition. There is a provision whereby any third party who intends on opposing a trademark may file for an extension of time for a period of maximum 180 days for filing an opposition against the trademark, subject to the approval from the USPTO.
In the event an opposition is filed within the 30 days or the extended time period, the respective opposition proceedings shall be initiated.

TRADEMARK REGISTRATION

If the trademark application is not opposed during the said opposition period, the USPTO shall issue the Registration Certificate for the trademark, provided the application is not filed on Intent to Use Filing Basic (Sec. 1b). For a trademark application filed on Intent to Use basis, the USPTO shall issue a Notice of Allowance. Within 6 months from the date of issuance of the notice, the applicant must file the Statement of Use (SOU) with the proof of actual use of the trademark. The applicant has a provision for filing extension of time every 6 months once (not exceeding 36 months from the date of Notice of Allowance) to file the SOU.

If no SOU or extension is filed, the USPTO shall abandon the trademark application. Once the SOU is filed, the USPTO shall review the same and may either approve the SOU or issue Office Action requiring for further clarification. On successful acceptance of the SOU, the trademark will be registered and the USPTO shall issue the corresponding Registration Certificate.

VALIDITY

The US trademark application once registered shall be valid for a period of 10 years from the date of application.

US TRADEMARK MAINTENANCE

The maintenance of the US trademark application requires the applicant to file a Declaration of Use and/or Excusable Nonuse (as the case may be) under Sec. 8 between the 5th and the 6th year from the date of registration or within the 6-months extended period thereafter (non-filing leads to cancellation of the registration).
Further, between the 9th and the 10th year from the date of registration or within 6-months of extended period thereafter, the applicant is required to file a Combined Declaration of Use and/or Excusable Nonuse (as the case may be), along with the Renewal application under Sec. 8 and 9, respectively (non-filing leads to cancellation of the registration). Validity
The US trademark application once registered shall be valid for a period of 10 years from the date of application.