Trademark registration in the United States is one of the most important steps for companies marketing their products and services in the country, whether via export or the establishment of a US company.
The registration gives the entrepreneur the comfort of knowing that their brand does not conflict with a pre-existing one, avoiding suits from competitors. In addition, the registry values the brand, an important intangible asset of any business.
With relatively fast processing (between six and eight months), the trademark registration is done in the United States Patent and Trademark Office (USPTO) and guarantees national protection to the trademark, constituting an important tool to combat piracy and valuation of the business next to the consumer market.
(Credit: Coolcaesar/2006)
Check out the answers to the most common trademark registration questions in the US:
Which body regulates trademark registration in the US?
The United States Patent and Trademark Office (USPTO), the equivalent of INPI in Brazil.
What are the registration options?
It is possible to register a brand that is already in use (current use) or one that is intended to be used in the near future (intent to use). The register may be only the written term of the trade mark (nominative trademark), only the logo (figurative trademark) or the name and logo (mixed trademark).
How long does the registration process take in the US?
If there is no opposition from third parties, about seven months.
What are the main advantages of having your trademark registered?
There are several advantages. The trademark registration establishes the presumption of legitimacy of its use by the one who registered it, which, for example, prevents third parties from requesting the withdrawal of the product from circulation. This certainty that there will be no problems in the marketing of the product or service gives the entrepreneur the comfort to invest in promoting their brand.
In addition, the brand is an important asset of the company. The registry ensures stability to this asset, increasing its market value.
Finally, the American customs can be informed of the registration of the mark and from then on it supervises the entry or exit of products that are using this mark unduly. This customs inspection is an important tool against the piracy of its products.
Does the trademark registration protect the technology/invention or the right of reproduction of my product?
No. Trademark registration is the protection given to a word, phrase, symbol, design, or combination of all these elements that identify and distinguish one product and/or service provider from other products and service providers of the same category. In other words, the brand is the visual identity by which a product or service is recognized by the consumer and should not be confused with the technology/invention linked to the product.
Does trademark registration protect my domain name and e-mail address?
No. The trademark is the right to use the trademark at a federal level, registered at the USPTO, while the protection of the domain name is done through a specific registration at the accredited domain registrars.
When are the symbols ®, ™ and SM used?
The ® symbol after the mark is used when the mark has deferred and active registration. Some foreign countries use this symbol to indicate that the mark has been registered in that country.
™ means “trademark” and can be used when the company adopts that brand as belonging to its product and there is a trademark application in progress, or even regardless of having applied for registration at the USPTO.
SM stands for “servicemark” and can be used when the company adopts that brand as belonging to its service and there is a trademark application in progress, or even regardless of having applied for registration at the USPTO.
What are the main factors that can lead to the rejection of my trademark application?
The biggest risk factor to deny a registration is the potential conflict with a trademark that is already registered. In order to judge whether there is a conflict, the USPTO must use the likelihood of confusion pattern, that is, if the conflicting marks can be confused in the eyes of the average consumer.
Other factors of refusal are, among others:
- Constituting only a surname or proper name;
- Constituting a term merely descriptive of the product or service;
- A geographical description of the origin of the product or service;
- Use of offensive term;
- A foreign term which, when translated, is a generic term;
- The title of a film or book;
- A merely ornamental product or service, that is, one that is not actually used.
What is “likelihood of confusion”?
Brand conflict may occur in the following cases:
1.The brand is very similar to some other brand already known or registered
2.The product or service which is the subject of the application is presented or described in a manner that may cause confusion on the part of the consumer and may lead them to believe that it is another brand.
Note: Brand similarity can be visual, phonetic or semantic (even if the word is translated), that is, any similarity that creates the same commercial impression on the consumer’s head. Some examples:
When will the registration start to protect my trademark?
If the trademark application is deferred, the starting date of the protection is retroactive, going back to the day of the request.
What is specimen?
Specimen is all material that demonstrates the effective use of the brand, such as business cards with logo, products with logo, website, etc.
Does Drummond conduct prior research to identify potential trademark conflicts?
Yes. Before applying for registration, Drummond carries out a research to identify any potential trademark conflicts. This research is good indicative of the chances of success, but does not guarantee the deferment of the request. In addition to trademark conflicts, common law protects the right to use trademarks for unregistered trademarks, which are considered to be strong and well-known in the marketplace.
Are there any guarantees that my trademark application will be granted? Is there a percentage of chances?
The USPTO reviews case-by-case registration requests. Although prior research conducted by Drummond reduces the risks of opposition, there is no way to guarantee deferment of registration.
After the deferment of the trademark registration, how long will my trademark be protected?
The trademark will be protected for 10 years. Between the 5th and 6th year after the date of registration you will need to submit a statement of use of the trademark or a justified statement of non-use to the USPTO. If the declaration is approved, your trademark will remain valid for 10 years from the date of registration. Otherwise, the record will be canceled.
Do you want to protect your trademark and start the process right now? Then contact us at info@drummonadvisors.com.
Our team is ready to help you.
