Once you have chosen your mark that you want to protect, the next step is the registration of that mark. In the U.S. the registration for the mark is done at the United States Patent and Trademark Office (USPTO) and the process of obtaining a registered trademark in the United States typically takes about 8-10 months from start to finish. In this blog, we will be dealing with the registration process. So, let's delve!!
What cannot be protected in the U.S.
Similar to the Indian Trademark Law, the U.S. law doesn't grant protection to descriptive marks or any generic mark. Descriptive marks are those marks which provide information about the quality and features of the goods and services. A descriptive mark shall only attain eligibility for registration upon decades of proof of 'distinctiveness', that the trader or manufacturer of the goods and services establishes the identification of goods and services in the mind of the consumer. For example, 'Aspirin', cannot enjoy the protection under the U.S. trademark law. Therefore the practice should be to choose marks which are fanciful and imaginative in order to attain the protection under the U.S. trademark law.
Sometimes, a trademark is also created by the virtue of the owner's use in relation to goods and services that result in 'common law' rights in the trademark which means the mark has acquired a secondary meaning. Though there is no clear cut threshold to determine whether the trademark has acquired secondary meaning, in the case of Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983), the Court laid down four factors namely:
- The extent and manner of advertising;
- The volumes of sales;
- The length of the mark's use;
- The result of consumer surveys.
In addition, USPTO doesn't grant protection to any mark which consists of the following:
- Symbols, words or monograms disparaging the integrity of the living or the dead (15 U.S.C. 1052(a));
- Any mark consisting of immoral, deceptive or scandalous matter (15 U.S.C. 1052(a));
- Any seal or stamps of the federal or the local government (15 U.S.C 1052(b));
- The flag of U.S. or coat of arms or other insignia of the United States or any State or municipality (15 U.S.C. 1052(b));
- Names of any individual unless proper consent is given by such individual (15 U.S.C. 1052(c));
- Any name of the former or deceased president of the U.S., unless their spouse has given due permission (15 U.S.C. 1052(c)).
Meeting the U.S. Office requirements
Generally, in order to fulfil the requirements of registration, the applicant should satisfy the below-mentioned criteria:
- The applicant must be the first to use the mark or should be the one having an intention to first use the mark in the U.S. in connection with the goods and services;
- The trademark for which the registration is sought should be arbitrary and suggestive and if descriptive; sufficient proof of distinctiveness must be presented at the time of filing an application of registration;
- The trademark in question must be sufficiently different and must not cause any likelihood of confusion about the users or interstate commerce.
Registration of Trademark
USPTO maintains two kinds of registers, namely principal register and supplemental register. The principal register is the regular register used by the USPTO to record protectable and distinctive marks while the supplemental register is a specialized register for marks which are descriptive in nature, surnames, and those marks describing their geographical origination capable of attaining trademark protection.
Filing basis for registration and its requirements:
There are four types of 'filing basis' for registration of the trademark in the principal register, which are as follows:
- Use-based Application: An individual or a company desirous of a trademark registration must have used the mark in interstate commerce to file a trademark application. The applicant needs to submit a statement of use stating since when the mark is being used in trade and commerce.
- Intent to Use Application (ITU): Any individual or entity who has the intention to use a trademark in good faith can file an application based on their intention to use the mark in trade and commerce. The applicant needs to submit a specimen of the trademark and a statement stating that no other party holds the right to use the trademark.
- Foreign Registration Basis: If any individual or entity seeking registration already owns a foreign registration of the mark and goods and services related in their country of origin. The applicant needs to file a copy of foreign registration along with other necessary documents.
- Foreign Application Basis: If any individual or entity owns an earlier-filed foreign application that was filed within a period of six months of the U.S. application for the trademark and the goods and services related to it. The applicant needs to file a claim of priority date for the U.S. application within six months of the filing of foreign application along with other necessary documents.
The applicant is required to mandatorily specify at least one filing basis in the application otherwise USPTO shall revert back the application for amendment. Trademark registration is not a highly-complicated process but requires help from a trademark attorney in the filing so that any further complications can be avoided.
Originally Published by Khurana & Khurana, February 2021
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.