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Summary of Application for US Trademark Registration

 The following description is general reference information and is not intended to be used as legal advice. If you are specifically interested in the US trademark application or any other relevant matter, please consult a US attorney.
 If you would like us to recommend a US attorney, please do not hesitate to contact us.



[Features of US Trademark System (principle of "use")]

 The most significant feature of the US Trademark system is the principle of "use." The US Trademark system is different from the Japanese Trademark System, which is based on a "registration" principle.

 In the United States, which the principle of "use" requires that the trademark right be established through actual use. In other words, the exclusive right to use the trademark is not established by mere registration of the trademark.

 What is the benefit of registration of a mark (or federal registration) in the United States? The registered trademark is superior to a non-registered trademark in a lawsuit. Major benefits are listed below.

* Even if a trademark is used for designated goods or services in a particular area of the United States, the trademark is deemed to have been used throughout the United States since the date of filing.
* Registration of a mark shall serve as constructive notice of the registrant’s claim of ownership of the mark. Any person who uses the mark subsequent to registration is deemed to have knowledge of the mark.
* To suspend the importation of counterfeit goods (alleged counterfeit products) at the border, the registrant may request border protection from U.S. Customs.
* The registrant is permitted to use the registered trademark symbol, designated by ® (circle "R") on their goods and/or services. In this way, the applicant can put the world on notice that the trademark is important to such an extent that the applicant has obtained a Federal Trademark Registration for the mark.
* The registrant can obtain "incontestability" to use registered mark if:
- the registered mark has been in continuous used for five consecutive years subsequent to the date of such registration and remains in use in commerce; and
- an affidavit of continuous use is filed.
Once "incontestability" is obtained, it is impossible to contest validity of the trademark right.
 Generally, in litigation, a registrant of a mark who does not use the mark will lose to a prior user of the mark who does not register the mark.
 However, once the registrant obtains “incontestability,” the registration cannot be cancelled due to an existence of a non-registered and trademark in prior-use. In this case, the prior user is able to make a plea in the area he actually uses the mark.
 In principle, the accused infringer in a trademark-infringement suit cannot contest the validity of the trademark registration.


[Registrable Trademarks]

* As a general rule, a trademark by which the goods of the applicant can be distinguished from the goods of others is registrable.

* Service marks are also registrable.

* As far as the goods/services of the applicant can be distinguished from the goods/services of others, trademarks are registrable in the United States even though the trademarks are unregistrable in Japan.
 For example, trade dress, (e.g., package design of the goods or interior and exterior of the store), scents, slogans, and lights are registrable as trademarks.


[Unregistrable Trademarks]

 As a general rule, trademarks that fall into the following categories are not registrable.

* Trademarks that consist of or comprise immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.
* Trademarks that consist of or comprise a name identifying a particular living individual without his/her written consent.
* Trademarks that consist of or comprise a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, mistake, or to deceive.
* Trademarks that consist of a mark which when used on or in connection with the goods of the applicant is merely descriptive or deceptively mis-descriptive of the goods.
* Trademarks that consist of a mark which when used on or in connection with the goods of the applicant is primarily geographically descriptive of the goods.
* Trademarks that consist of a mark which when used on or in connection with the goods of the applicant is primarily geographically and deceptively mis-descriptive of the goods.
* Trademarks that consist of a mark that is primarily merely a surname.
* Trademarks that consist of a mark that comprises any matter that, as a whole, is functional.


[Application for Registration and Renewal]

Application

* The applicant must identify the "basis of the application" as being one or more of:.
 1) Use in commerce in the United States;
 2) Intent to use;
 3) Registration of a mark in a foreign applicant's country of origin; and
 4) Claim of priority, based upon an earlier-filed foreign application.

* Multiple selection of the "basis of the application" is permitted. The multiple selections allow the use of other bases even when a certain basis is determined to be invalid.

 Although it is possible to add a new basis of the application afterword, we recommend multiple selections at the time of the filing for all appropriate bases for application.

* 1) Application based on use in commerce in the United States
 Application based on actual use is selectable if the mark has already been used in the United States.

 However, if there is no record of shipments of goods on which the mark is used, mere use of the mark on a Web page is considered merely as an advertisement and cannot be a basis for "an application based on an actual use of mark in the United States."

 Use of a trademark for certain goods means putting mark directly on the goods or using mark in connection with the goods.

 On the other hand, for service marks, use of the mark in an advertisement is considered "use" of the trademark.

 For example, information regarding the first use date of the trademark in the world including Japan, or the first use date in interstate commerce in the United States or in international trade and an example of use are required.

* 2) Applications based on intent to use
 Applications based on a bona fide intent to use is selectable if the applicant has an intention to use the mark in commerce but has not used the mark in the United States.

* 3) Applications based on registration of a mark in a foreign applicant's country of origin
 Applications based on registration of a mark in a foreign applicant's country of origin are selectable if the trademark is registered in a foreign country (e.g., Japan).

 Although "use" in the United States prior registration is not required, the applicant must describe in the application documents showing a bona fide intent to use.

 When submitting information regarding a foreign registration, such as country, registration number, and date of registration, a certificated copy of the registration and translation thereof must be filed.

* 4) Applications claiming priority based on an earlier-filed foreign application
 Applications based on claim of priority are selectable within 6 months from the filing date of the foreign application.

 In this regard, a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application is required.

 Information such as country, application number, and date of application of the earlier-filed foreign application is required.

 If a trademark that is the subject of an earlier-filed foreign application is registered in the foreign country after the US filing date, the US trademark application is treated as an application based on registration of the mark in a foreign applicant's country of origin.

* Registration of a mark in a standard character format will provide broad rights, namely use in any manner of presentation, i.e., different fonts or colors.

 Therefore, the standard character format is advantageous if there are no special reasons for asserting the trademark right in a specific font or color.

 In this regard, a mark including Chinese characters, or Japanese characters of hiragana or katakana cannot be filed in the standard character format.

* Description of designated goods/services
 The designated goods/services must be specifically described.

 For example, in Japan, even if there is intent to use a mark only on hats, the mark may also be used with any other "Class 25 Clothes" as designated goods."Class 25 Clothes" includes not only "Hats," but "Jackets," "Trousers," "Skirts," "Mantles," "Nightwear," "Underwear," "Swimsuits," "Sash bands for kimono," "Aprons," "Neckties," "Mufflers," "Caps" etc.

 On the other hand, in the United States, the designated goods must be specifically described. If the description of the designated goods in a trademark application in the United States is described in the same manner as in Japan, the Examiner will usually reject the application.

 Therefore, if an applicant uses the mark on hats or caps and would like to obtain a registered trademark right in the United States, the designated goods should be described as "Hats" or "Caps [headwear]."

Examination

* The trademark application is substantially examined with respect to all requirements.

* If the application fails to satisfy the requirements, the applicant will be notified and advised of the reasons not entitled to registration. The applicant then has six months from the date of mailing of the notice to respond thereto by means of a REMARKS and/or amendment.

 The rejections may be overcome by submitting a disclaimer or consent.

* Period from the application to the first notice is considerably short, an average of three months.

* If the reason of rejection is not overcome, a final Office action is issued.

* If there is no reason for rejection or if the rejections are overcome, the contents of the application is published in the Official Gazette of the Patent and Trademark Office.

Opposition to Registration

* Within 30 days after publication, any third party who believes that he/she would be damaged by the registration of a mark may file an opposition.

* In the United States, the pre-grant opposition system is used. In Japan, post-grant opposition system is used.

Registration

* The trademark is registered if an opposition is not filed. Even if the opposition is filed, if the opposition is withdrawn or the registration is not successfully opposed, the trademark is registered.

 For an application based on "intent-to-use," a notice of allowance is issued. By filing an affidavit setting forth use of the mark and evidence showing use of the mark within six months after issuance of a notice of allowance, the mark is registered.

* Each trademark registration remains in force for 10 years from the date of registration.

* The registrant must file an affidavit setting forth use of the mark and evidence showing use of the mark during a 5 to 6 year period following registration. The aim is to reduce non-use of registered trademarks.

Renewal

* The trademark registration can be renewed every ten years as many times as needed.

* The registrant must file an affidavit setting forth the use and evidence showing use of the mark at the time of the renewal.


[Duration of non-use required for non-use cancellation]

* A mark is deemed to be abandoned when its use has been discontinued with the intent not to resume such use.
 Intent not to resume may be inferred from the circumstances.

* Nonuse for 3 consecutive years is prima facie evidence of abandonment.

* "Use" of a mark means the bona fide use of that mark made in the ordinary course of business, and not made merely to reserve a right in a mark.


[Fees]

* USPTO fees are shown below are current as of August 1, 2011.

* TEA(TEA allows to freely describe goods and/or services.)
US $325 per Class
* TEAS Plus(TEAS Plus require to select goods and/or services from the USPTO's Acceptable Identification of Goods and Services Manual.)
US $275 per Class

 No registration fee required.

* In addition to the official fees for the US Patent and Trademark Office (USPTO), service fees for the US and Japanese agents are required.


[Considerations for designating the United States in International Application for Trademark Registration (Madrid Protocol) ]

* Since the United States is a member of the Madrid Protocol, it is possible to file an application for registration using an International application for trademark registration.

* When the applicant of an International trademark registration designates the United States, the applicant must file a declaration of intent to use the mark (MM18).

* The United States requires the applicant to claim a color or combination of colors when the mark consists of a color or combination of colors in the application form (MM2).

 Therefore, the applicant must fill-out the 8th section "Color(s) claimed" in the application form (MM2).

 Specifically, "color or combinations of colors claimed" and "indication, for each color, of the principal parts of the mark that are in that color" should be described.

* As explained above, a more specific description of designated goods and/or services is required in the United States. Therefore, keeping the description generic, even though other countries may permit a generic description, the likelihood of receiving a rejection due to unclearness of the designated goods and/or services can be increased.

 To avoid such rejections, the applicant can preliminarily limit the goods and/or services for which protection is sought in the United States.

* Even when protection in the United States is sought by filing an International Application, an affidavit of continuous use must also be filed during the 5 to 6 year period following the registration and at the time of Renewal.

* If no Office action is issued within 18 months from the date of notification of the international registration from the International Bureau to the USPTO, the international registration will have the same effect as a trademark is registered in the United States on the date of the international registration.

 In this regard, in the United States, the applicant should be mindful, since an Office action in an opposition procedure may possibly issued upto 18 months from the notification.

* If the applicant files an application based on "intent-to-use" without using the international application, the mark cannot be registered, unless evidence showing use of the mark is submitted within 6 months from the issuance of a notice of allowance.

 On the other hand, if the applicant files an international application, the submission of evidence showing use of the mark can be withheld up until until 5 years from the date of the international registration. In other words, the international application has an advantage as to the length of the preparation period for use of the mark.

* Please refer to the link below which contains a general explanation regarding International Application for Trademark Registration.


[Major References]

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