United States – Use of a Trade Mark
April 11, 2008
The US Patent and Trademark Office (USPTO) operates a policy quite different to that of the UK Intellectual Property Office (IPO) and Office of Harmonisation in the Internal Market (OHIM) as regards trade mark use. It is important that non-US applicants are aware of this difference before filing a trade mark application in the USA.
When applying for a US mark, a key element to bear in mind is the ‘use’ basis on which you file the application. Trade marks that are already in use in the USA are treated differently procedurally, to trade marks which have not yet been used in the USA.
Where the Mark is ‘In Use’
If the trade mark is already in use in the USA, you file a ‘Use Application’ along with a declaration that the mark is in use in commerce. At the same time you need to state the date the mark was first used anywhere in the world as well as the date it was first used in USA. The application must be supported with a specimen of the mark as used ‘in commerce’ (this is the expression used throughout the regulations, and is what is meant when discussing “use” in the rest of this article). These extra hurdles undoubtedly make it more cumbersome to file US applications.
Where there is ‘Intent to Use’ the mark
If the mark is not yet used in the USA, the application would be filed on an Intent to Use basis. At the same time a declaration of bona fide intent to use the mark is to be filed.
You are required to be using the mark before the USPTO will register it, and time starts ticking as soon as you file your application. There are two windows of opportunity to notify the USPTO that you have begun to use the trade mark.
Window 1: Before the mark is approved for publication in the Official Gazette
An Allegation of Use form is filed attesting to your use of the mark and providing a specimen of the mark in use, along with a fee (of $100) per trade mark class.
Window 2: After USPTO issues the Notice of Allowance (a written notice from the examining USPTO attorney approving the mark)
If you have begun using the mark by the time the USPTO issues the Notice of Allowance, you file a Statement of Use form along with the required fees and provided you do so within the stipulated 6 months of the USPTO issuing the Notice of Allowance, that is the end of the matter.
However, if you have not yet begun to use the mark you must apply for extension of time to file your statement of use form, otherwise your trade mark application is deemed abandoned. Requesting an Extension of Time to File a Statement of Use will give you an additional 6 months in which to file a Statement of Use. This can be renewed by following the same procedure each 6 months for up to a maximum of 36 months.
To avoid the time and expense of continual renewal extensions you are motivated to ensure the trade mark is used as soon as possible. This should not put you off from applying for a trade mark before it is used, because despite the somewhat onerous obligations, it is essential to ensure that your trade marks are protected as early as possible – which is always ideally before they are ever used in commerce. If you were to wait till you were ready to use your trade mark in commerce before filing an application to register it, you would run the risk of a competitor using the same trade mark, and thereby weakening your rights to the mark in the market and your ability to register the trade mark.
An alternative to filing a trade mark directly in the USA is to file a Madrid Protocol application. This is an international system whereby you can file for trade mark protection in a choice of participating countries worldwide, under a single application. The application is based on a national application, for example, a UK trade mark. You designate the USA as an area in which to extend protection for your mark.
A Madrid application designating the USA can provide advantages over a direct US application, such as for the wording of the classifications (purposes for which you are registering the mark). Whereas a direct US trade mark application will fall within the narrow USPTO classification system requirements, and in theory these requirements apply equally to a Madrid Protocol applications, in practice the Madrid applicant is able to get away with wider classifications.
In practice, it seems that the Madrid Protocol application is more desirable for a UK applicant, and if protection is wanted in a few other countries too, a Madrid Protocol application would be more cost effective than filing a direct US application.
Maintenance
Maintenance requirements are something that an overseas applicant should pay particular attention to once they have a registered US mark, and in particular the requirement to file a Declaration of Use of the mark before the sixth year of the date of registration the trade mark. A business with a large portfolio of trade marks will have to watch their deadlines for each mark carefully to maintain their registration portfolio and avoid losing a registration or having its validity challenged by third parties.
Concluding Thoughts
The USA presents a challenge to overseas applicants in terms of its numerous procedural requirements that will be unfamiliar. As it is a key market for most international businesses, if you are embarking on US applications or reviewing an existing trade mark portfolio, professional expertise is essential to ensure your brands are given the protection they need in the USA.
