Stages of registration

The main U.S. statute regulating the commercial property registration procedure is the Federal Trademark Act (Lanham Act). It allows not only residents but also foreign commercial entities to obtain a certificate of designation. The general rules for filing and examining trademark applications in the U.S. are as follows:

• the USPTO, the U.S. Patent and Trademark Office, is the national agency authorized to review applications;
• if a foreign business applies for registration, it must do business through U.S. patent attorneys;
• foreign companies can designate the U.S. for registration under the Madrid system, the state is a party to the Madrid Protocol - for this form of registration it is necessary to protect the trademark in their country.

If a company is expanding into the United States, but already has registered trademarks, it may file a declaration as part of the application. This document specifies the details of the valid certificates in other countries, as well as the declaration of intention to use the designation in the territory of the USA.

Significant features are also characterized by the procedure of consideration of the application. It consists of the following stages:

• documentation is prepared, which includes a statement, designation and its description, classes of goods according to the Nice Classification, declaration (in the case of international registration);
• the application is filed and registered in the USPTO, after which the information is published in the official publication of the patent office - Official Gazette;
• interested persons are given 30 days after publication to file an opposition to the registration of the application - for instance, the subject matter of the opposition may be an earlier filed application or lack of distinctiveness;
• If these objections are received, they are adjudicated by the USPTO Dispute Review Board;
• Examination of the designation includes an information search in national and international registers, checking the obligatory features of the object (distinctiveness etc.).

When specifying the classes of products according to the Nice Classification, it is necessary to take into account that their number will affect the amount of duties. For Class 1 you have to pay $275. The number of classes increases with the number of classes.

U.S. law provides for a simplified registration procedure if the applicant will indicate in the application the point of intent to use the trademark immediately after obtaining a certificate. However, the right holder will have to confirm that she has begun to use the designation - for this purpose, a declaration form (Statement of Use) is submitted. For filing of the declaration and the necessary evidence is given 6 months, but the owner of the trademark may apply for an extension of these terms.

An additional obligation arises for the owners of the trademark 5 years after obtaining the certificate. They are obliged to submit a declaration (Declaration of Use) in which they set out the evidence of legal use of the registered designation - labeling of their own products, transfer of rights under license to other entities. In exceptional and valid cases it is allowed to submit a special document - Excusable Nonuse. In this form the company can justify the reasons for non-use of the trademark.

If the right holder fails to submit the Declaration of Use or Excusable Nonuse, or the submitted evidence will not support the use of the trademark, the following consequences can occur:

• any interested person has the right to file an objection on the fact of non-use of the designation;
• The objection may be a cancellation of legal protection or transfer of exclusive rights to another person;
• Objections will be considered by the USPTO Dispute Resolution Chamber, and the decision of this office may be appealed in court.

When objections are considered, the validity of the reasons for non-use will be checked. Also, the parties can settle the issue by an amicable agreement, under which the original right holder will receive remuneration if the rights are waived.

The duration of a designation certificate in the U.S. meets international standards - 10 years. After the expiration of the term of protection, you can apply for an extension. This procedure is done through the USPTO. And the amount of the fee will be $500 per class of product. The fee will be $500 for each product class according to the ICSU.