With the US being a major market for UK companies many businesses choose to seek US trademark protection.
For UK applicants a US trademark application can be ‘based upon’ an existing UK trademark registration. This simplifies the process and reduces cost in comparison to basing an application on ‘intent to use’. However, if a trademark is already being used in the US it can be preferable to base the application on actual use.
Prior to filing an application a pre-filing clearance search can be performed by the appointed US trademark attorney. Whilst not mandatory, this is a recommended step.
Once a US trademark has been filed the United States Patent and Trademark Office (USPTO) will perform its own search for earlier registered rights.
If any earlier trademarks are located or if any other objections are raised it will then issue an office action that must be replied to for the application to progress. If any objections cannot be overcome then the application may be refused.
If approved by the USPTO the mark will be published for opposition purposes. If no opposition arises within 30 days of the date of publication the mark will proceed to registration.
Once the trademark has been registered the owner is obliged to file an Affidavit of Continued Use between the 5th and 6th year after registration attesting to the use or non-use of the mark for the goods/services covered by the registration. If this declaration is not filed in good time then the USPTO will cancel the registration leading to loss of trademark rights.
An Affidavit of Continued Use must also be filed between the 9th and 10th year after the registration date and between each successive 9 to 10 year period thereafter. In addition an Affidavit for Renewal must be filed between the 9th and 10th year after the mark is registered and between each successive 9 to 10 year period thereafter.
A US trademark is renewable every 10 years.
If you require assistance with US trademark protection please do not hesitate to contact us.
