Bring your Brand to the States

Expanding your business to the United States? Simply moving your business to the United States? Don’t forget brand protection through trademark registration. Brand protection in the United States differs from most countries. Some common law trademark rights may be obtained by actual use here, but registered trademarks rights are likely to result in stronger protection.

Trademark registration abroad usually can be obtained without any use of a mark, but foreign registrations do not provide protection here. United States registration requires use first except when already registered abroad. It is possible to file trademark applications prior to use and establish priority, but registrations will not issue until use in the United States. In addition to filing trademark applications at least some level of search is usually beneficial to try to uncover potential conflicts before moving forward. Using an attorney knowledgeable in the trademark field is recommended for trademark filings and counseling.

Treaties -- the Paris Convention and the Madrid Protocol -- backed by U.S. implementing legislation help facilitate the registration process. An existing International Registration under the Madrid Protocol obtained elsewhere can be used to extend coverage into the United States by a simple filing. Filing a Madrid Protocol extension is simple. The United States Patent and Trademark Office examines the extended registration and if acceptable, publishes the mark for opposition. Renewal can be readily made for all territories designated. Transfer or assignment of the International Registration can be completed without legalization or other formalities.

Another approach is to register the mark in the United States based on existing registration abroad. This is aided by the Paris Convention as enacted in the U.S. Trademark Law known as the Lanham Act. Using the “previously registered abroad” aspect of the Paris Convention is an exception to the earlier mentioned U.S. requirement that a mark has to be used before registration. The United States Patent and Trademark Office still examines the application to make sure that it meets its standards, thus, not merely descriptive, not conflicting with an existing registration, or any other number of other possible impediments. But lack of use does not thwart or delay U.S. registration if the application is based on an existing foreign registration.
The third manner of obtaining U.S. protection is simply applying directly to the U.S. Patent and Trademark Office without the benefit of a foreign registration or international registration. The application for registration can be either an (1) intent to use application where the mark has not yet been in use, or (2) a use-based application, based on actual use of the mark in the United States (or between the United States and abroad). If already used, specimens of the mark are filed along with first use dates.

If not yet used in the United States, an intent to use application is filed. There the applicant attests it has a bona fide intention to use the mark in the United States. The Trademark Office examines the application for form and substance. If acceptable, it is published for opposition. After publication assuming no opposition is filed, the application is “allowed.” A Notice Of Allowance then gives the applicant with six months to prove use in the United States. If not used within that six-month period, an extension of six months may be requested. A total of up to 3 years from the Notice of Allowance based on the initial filing period plus five 6-month extensions, may be obtained to file proof of use.

Protect your brands in the United States and you will be better prepared to meet your competition here.

The discussion here is for general interest and may not apply to all situations. Consult knowledgeable counsel for specific situations.

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