The trademark protection regime in the U.S. differs significantly from generally accepted international rules. The state is still not a party to the Paris Convention, although recent changes in national law have simplified the procedure for confirming rights if they have already been registered in other countries. Let's analyze what peculiarities are to be observed by the applicant when asserting the US trademark rights.
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:
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:
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:
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.
Registration of trademark rights in the United States is a complex procedure, as the applicant must comply with many special requirements and nuances. Our company offers services for the execution of documents and support of the registration procedure with the USPTO. We will perform the following actions on behalf of our clients:
Our company cooperates with US patent attorneys on a permanent basis, which allows us to observe all the nuances of the national legislation. To find out more about our specialists' working conditions, you can consult us by phone or through the feedback form.
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