trademarkroomusa.com :: U.S. Trade Marks

Registering your trade mark is one of the most important steps you as a business or individual can make in protecting your brand. After all, it's the first thing a customer sees or hears about your services or product. Many people create a brand and spend time and money in marketing it without even giving any thought as to the availability of that brand. In the long run this may result in a trade mark infringement action against you and the headache and hassle of re-branding.

If you are starting a business or developing a product and have a particular name in mind, I can help you identify any confusingly similar marks that are already in the marketplace, and point out the risks (if any) associated with your brand by way of a search. If you already have a brand and have decided itís finally time to get your mark registered, I will search the trade mark databases to make sure your mark is available for registration.

What many people do not realise is that you don't have to be living in America to apply for and receive a registered trade mark in the U.S.A. All you have to do is be using your trade mark in U.S. commerce, or have the imminent intent to use your mark in U.S. commerce… that's it! Why not expand your business into one of the most sought after markets in the world? Contact me to get your U.S. trade mark search underway and you can have the results back and an application on the go in as little as 48 hours!

Why trademarkroomusa.com?

I am a qualified U.S. Attorney, specialising in U.S. IP law, and have dealt with a plethora of U.S. trade marks on behalf of clients all around the world. I can perform a detailed and accurate search of the United States Patent and Trademark Office database to identify any conflicts with your mark and, if the road is clear to proceed, have an application filed for you shortly thereafter.

Unlike larger firms where clients are sometimes overlooked and underappreciated, here at trademarkroomusa.com we will treat you with the utmost care and professionalism. If you ever have a question or concern, I am only a phone call or email away and will never charge you for my time in relation to this.

See for yourself how trademarkroomusa.com can help develop the Intellectual Property rights of your business - know your rights!

Frequently Asked Questions

Getting Your Trade Mark Registered in U.S.A.

What does trademarkroomusa.com's U.S. Trade Mark Search Include?

The trade mark search will identify registered, pending, and dead trade marks which remain on the trade mark registries database. We will conduct a search against the USPTO Registry.

Please note that the USPTO registry does not provides any guarantee either to the accuracy of their databases or publications to anyone.

A search cannot be made, against the following forms of registered and unregistered intellectual property rights:

1. Unregistered trade marks;
2. Copyright;
3. Design right;
4. Registered designs.

As a result of this there will always be an element of risk that a third party has registered or unregistered rights other than trade mark rights in a logo or trade style which has not been identified in the trade marks search. A brief search will be made against the leading search engines such as "Google" or "Yahoo" in order to identify any competitors in the USA using a similar or identical trading sign.

What are the benefits of obtaining a federal trade mark registration in the U.S.A.?

Federal registration has several advantages, including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. Other benefits include:

1. Constructive notice nationwide of the trademark owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

Filing basis

Your trade mark application will include your "basis" for filing. Most applicants base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future.

Do I have to actually use my mark in U.S. commerce before it is registered?

The U.S. trade mark registration system differs from the U.K. system in that before the U.S. Patent and Trademark Office (USPTO) will grant you a registration, you will have to show use of your mark in U.S. commerce.

If your mark is published based upon the actual use of the mark in commerce, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about twelve (12) weeks after the date the mark was published.

If the mark is published based upon your bona fide intention to use the mark in commerce, the USPTO will issue a NOTICE OF ALLOWANCE about twelve (12) weeks after the date the mark was published, if no party files either an opposition or request to extend the time to oppose. You then have six (6) months from the date of the NOTICE OF ALLOWANCE to either:

• use the mark in commerce and submit a STATEMENT OF USE; or
• request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE.

Fees for filing the above forms and all contentious matters with the U.S. Patent Office will be handled by Michael Coyle (Solicitor, Director) and Waheedan Jariwalla (U.S. Attorney), charged at an hourly rate of $195 + VAT and $175 + VAT respectively.

What are the different classes?

Your application must list the specific goods/services for which registration is sought. For a listing of acceptable wording for goods and services, see the USPTO's Acceptable Identification of Goods and Services Manual, at http://tess2.uspto.gov/netahtml/tidm.html.

How do I know which classes my mark falls into?

Don't worry - when you decide to file your application with us, the attorney at trademarkroomusa.com assigned to your application will determine this for you. They will work with you to make sure all the goods/services you engage in are adequately covered in your application.

Why might my mark be refused?

Section 2 of the Trademark Act contains several of the most widespread (though not the only) grounds for refusing registration. The main grounds for refusal under Section 2 may be summarised as trade marks:

1. that consists of or comprises immoral, deceptive, or scandalous matter;
2. that disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
3. that consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation;
4. that consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
5. that resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant's goods or services are likely to cause confusion, mistake, or deception;
6. that merely descriptive or deceptively misdescriptive of applicant's goods or services;
7. that are primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services; and
8. that are primarily a surname.

How long does the whole process take?

A "trade mark search" will take between 24-48 hours. After your application is filed, however, it is difficult to predict how long it will take for an application to mature into a registration, because there are so many factors that can affect the process. The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing, and the legal issues which may arise in the examination of the application.

How long will my registration last?

Registrations granted on or after November 16, 1989 have a 10-year term. For a trademark registration to remain valid, an Affidavit of Use ("Section 8 Affidavit") must be filed: (1) between the fifth and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration. The registrant must also file a §9 renewal application within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, with payment of an additional fee. We look forward to working with you and making your trade mark search/registration experience as easy and quick as possible. If you have any questions about any of the material discussed in this guide, please feel free to contact us anytime.