Useful information when protecting trademark rights in the United States of America (USA) is presented below.
It is our hope that our clients will find this page helpful in protecting their intellectual property overseas.
< Approximate time from application to registration of trademarks in the USA > (As of March 2018)
Currently, it takes approximately 7-10 months from the date of filing to the date of registration of a trademark.
*The period for responding to an Office Action is six months.
2. Trademark Rights in the USA
A. Marks that may be registered
(1) Types of Mark
- 1) Trademarks
- 2) Service marks
- 3) Collective marks
- 4) Certification marks
(2) Marks that may receive protection
Based on interpretation of the USA trademark law, words, names, symbols, characters, numbers, slogans, crests, patterns, designs and combinations thereof can be registered as marks, as can the following:
- ・Three-dimensional [3D] marks
- ・Sound marks
- ・Motion marks
- ・Color marks
- ・Position marks
- ・Hologram marks
- ・Olfactory marks
- ・Touch marks
- ・Taste marks
- ・Trade Dress
B. Use Principle
(1) Registration Principle and Use Principle
In Japan, a trademark right originates with the registration of the trademark (the 'registration principle'), whereas in the USA, a trademark right originates with the use of the trademark (the 'use principle').
- ⇒ Based on the use principle, if an unregistered trademark is used then the right will originate under common law of the region in which it is used. On the other hand, a trademark right will be deemed to be abandoned if it is registered but not used.
- ⇒ During the period between filing and registration it is necessary to submit proof of use, otherwise registration will not be approved (with the exception of some Madrid Protocol applications).
(2) Definition of 'Use' in USA Trademark Law
The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark (Trademark Law Article 45 (15 U.S. Code § 1127)).
- ⇒In commerce, the use of a mark on or in association with goods. Use in advertising (i.e. not in physical form such as on goods or packaging) shall not be deemed "use in commerce" in the case of goods.
- ⇒For service marks, use of a mark in advertising shall be deemed "use in commerce".
- ・Regarding goods: a mark shall be deemed to be in use in commerce when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce.
- ・Regarding services: a mark shall be deemed to be in use in commerce on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
(3) Submission of Statements of Use
- ⇒ In order to maintain a trademark right, it is necessary to continue to use said trademark and also submit evidence of use or an affidavit to that effect to the USPTO.
- Statement of Use (Article 8) [=§8 affidavit]
Except in the case of applications based on Japanese trademarks, it is necessary to submit a Statement of Use at the time of registration. Also, it is necessary to submit Statements of Use between the fifth and sixth years after the date of registration, and at the time of the 10-year trademark renewal procedure, i.e. three times in total, until the first renewal is carried out.
Submission of several Statements of Use in this way is required in order to firmly enforce the 'Use Principle' of the USA Trademark Law.
- Statement of Incontestability of Trademark Right (Article 15) [=§15 affidavit]
Between the fifth and sixth years after the date of registration, it is possible to submit a statement regarding the incontestability of a trademark right (Article 15, statement of incontestability of trademark right). Under certain conditions including that the mark has been in continual use for five years since registration and that it is currently still in use in commerce, etc., the statement is to the effect that the mark's validity cannot be contested by third parties.
While it is not necessary to submit a statement of incontestability, it is recommended to do so as it will lead to a more stable and stronger trademark right, in the absence of exceptional circumstances. If a statement of incontestability is submitted between the fifth and sixth years at the same time as submitting the second statement of use (see above), the associated costs may be lower.
C. Trademark Applications
(1) Period of right
- - 10 years from the date of registration
- - Can be renewed for 10 years at a time
- - Even after the trademark right has expired, renewal is still possible within a six-month grace period
- - Important: trademarks that are continuously unused will be deemed to be abandoned
(2) Classes (goods and services)
Examinations in the USA require goods/services to be written specifically. As the USA is a participant in the Nice Agreement, the classes of goods/services are universal, but there are many cases in which the Nice Agreement's written expressions of designated goods/services are not used. Major concepts such as the 'Headings' of international classifications, or comprehensive written expressions such as those used in Japan are not used. Instead, it is necessary to file an application with each item written specifically/with subordinate concepts.
Example: "[superordinate concept], namely, [specific name of goods]"
* the term "namely" above can be substituted for other terms such as "consisting of", "particularly", "for use in", etc.
(3) Application filing
Information required in filing document
- - Drawing (example of mark) *not required for marks consisting of standard characters
- - Description of goods and services (classes, designated goods/services)
- - Applicant's name and address
- - Filing basis
- - Government fee (paid to USPTO)
It is necessary to clearly indicate one of the following forms of application as the basis for the application.
(1) Application based on actual use
(2) Application based on intent to use
(3) Application based on national application/registration (priority claim)
(4) Madrid Protocol application designating the USA (5) A combination of the above
See below for the USA's status regarding the following major treaties:
|Paris Convention||WTO Agreement||Patent Law Treaty||Madrid Protocol||Nice Agreement|