United States: Thinking About Filing A US Trade Mark Application?

Last Updated: August 13 2019
Article by Jo Eales

In our recent article, we highlighted the benefits of thinking internationally when it comes to trade mark registration and brand innovation.

One country that features regularly in our clients' trade mark registration roadmap is the US. While there are some similarities to the UK and EU trade mark systems, the US system has quite different procedures and rules, which should be considered before filing an application across the pond. In this article, we briefly highlight some of the key differences.

Third Party Rights

The main fact to bear in mind is that the US is a 'first to use' jurisdiction. This means the first user of a mark owns the rights in that mark, as opposed to the first person to file an application to register the mark. If you apply to register a mark without first undertaking a full clearance search, an earlier user could later challenge your use and registration, even if the US trade mark registry has accepted your application. It's therefore important to undertake thorough searches before using and applying to register a mark in the US.

Filing a US trade mark application? You need to choose a 'filing basis'

Unless you're filing a US trade mark application through the International filing system, you need a clear 'filing basis' for your application.

This differs from the UK and EU-Community-wide trade mark systems which don't strictly require a filing basis. Instead, the UK requires a basic 'intention' to use the mark and for an EUTM, no intention or actual use is needed to file.

The key US filing bases include:

  • a 'home registration' approach – if you're the owner of a registration in your 'home' country, such as a UK or EUTM registration, you can use this as the springboard for your US application. This is a straightforward way of progressing a US application. However, note that your US application can't be wider than your 'home registration' in terms of goods and services covered. A 'home application' can also be relied on;
  • an 'intent-to-use' approach – if you plan to launch in the US and want to reserve your name in advance, you can file on an 'intent-to-use' basis. This can be useful for getting your application in early. However, you need to prove actual 'use' of the mark for the relevant goods and services in US commerce before the registration will actually issue, and there is a time limit to do so; and finally,
  • a 'use' approach – if you're already using a name in the US to sell goods or deliver services, it's possible to file on the basis of that 'use'. The downside of filing on this basis is that applicants must go through what can be a fairly lengthy process of specifying dates of first use in the US and providing comprehensive specimens demonstrating it (such as the mark on packaging or on adverts). However, the upside is that gathering this information at the outset, and putting it on the public register, typically results in a stronger trade mark registration that's less likely to be challenged by a third party on the grounds of non-use.

Got your US trade mark registration, now what?

Once you've established your filing basis and seen your application through to registration, don't sit back and relax for too long!

As in the UK and wider EU, the US operates a 'use it or lose it' approach. If you don't use your trade mark in commerce, third parties can apply to cancel it. In the UK and wider EU, trade mark registrations can be cancelled if they haven't been used for a continuous period of five years following registration. In the US, the equivalent period is three years.

A US trade mark registration also requires 'maintenance' with the registry, requiring evidence to prove your use of the mark every five years. This contrasts with the UK and EUTMs, where the registries don't require trade mark owners to keep the register updated with specimens of use.

Whichever filing basis you chose (including filing an International application and designating the US), a trade mark owner must proactively file a declaration of use (along with examples of the use) between the fifth and sixth year after the registration is issued, and again between the ninth and tenth years prior to renewal.

In practical terms, the way in which a trade mark owner uses a mark in the US needs to be kept under regular review.

For example, minor stylistic variations to how the mark is used can lead to a finding that the original US registration can no longer be maintained, because the owner is not using the mark in its registered form.

Similarly, if the mark itself remains unchanged but the goods and services provided under the mark have altered over the years, the specification might require paring back quite significantly to accommodate this.

Our views

Ultimately, before filing an application in the US, some strategic thinking is needed about the best approach for the mark. There is no single 'better' filing basis in the US. Instead, the approach to the US depends on the mark itself (i.e. how descriptive or distinctive it is), the applicant's plans in the US market, and of course, budget. Our US counsel can help you with this.

In the long-term, it's also really important to keep records of how a mark is being used. This is the case in any jurisdiction, but particularly so in the US. This will make the maintenance filings required by the US registry a much smoother process. It's also vital to educate the business that small changes to how a mark is used or presented can quickly alter the ability to maintain a registration.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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