USA trademark registration

In the USA, trademarks are regulated by Federal Law. Like in all Common Law countries, trademarks receive several levels of protection. State law also applies to trademarks and adds its own layer on to the Federal system. An application for registration may be based upon actual use in commerce or upon a bona fide (good faith) intent to use the mark in commerce. An “intent to use” basis will require filing an additional form and paying additional fees.

The USPTO (United States Patent and Trademarks Office), in contrast to European Intellectual Property offices, grants rights to owners only if they are the first to register the mark (15 U.S.C. -1127 a). In Europe, trademark offices do not police registration requests with regard to third parties rights. This means that trademark owners should monitor trademark registers to track new similar applications.

In the USA, the USPTO does conduct a prior search and prevents all confusingly similar trademarks from being registered. It is therefore more difficult to register a trademark in the USA than in Europe. Due to this, trademark clearance searches are even more important.

MAS LEGAL provides BrandToBe trademark search and registration package for your U.S. trademark registration.

How to protect my trademark?

Our tips for protecting your trademarks and our trademark best practices.

>Registered trademark vs Common law trademark

In Common Law countries, “prior use” is generally sufficient for claiming rights over a posterior trademark in case of dispute. In Civil Law countries, however, this is not the case and registration is a condition of protection.

Legal actions available for “Common law trademarks” may differ from those available for registered trademarks. Registration will always facilitate the management of litigation in case of dispute. In addition, only trademark registration will provide legal certainty on exclusive rights to the use of the trademark. It is then highly advisable to register a trademark, rather than relying on Common law protection.

Freedom to operate in the USA

In order to launch a new brand or target new markets, it is important to verify your freedom to operate. BrandToBe® includes a trademark search and registration package for the USA.

BrandToBe® is designed to research and analyse new brand availability. We prepare a full risk assessment, conducted by legal experts.

How does BrandToBe^®work?

We conduct availability searches on proprietary databases. We assess a broad range of Intellectual Property rights that might prevent exploitation (trade names, common law marks, domain names, company names, copyright, etc.). We assess the pros and cons of a particular brand name compared to alternates; We propose mitigation solutions if we find obstacles and risks to the registration of your trademark.

Filing your trademark in the USA

If your brand is available for registration or if our lawyers find a suitable mitigation strategy, we will prepare and file your trademark application in the United States at no additional cost (terms apply).

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