For companies and individuals interested in doing business in the United States, it is very important to ensure that the trademark under which products will be sold or services will be rendered is available.
U.S. Trademark Registration
How it works?
Trademark rights in the U.S. may be acquired in two different ways:
1. Through use of the trademark (known as common law use or unregistered trademark rights); or
2. Through a bona fide intent to use the trademark in the U.S. together with the filing of a U.S. Trademark Application with the U.S. Patent and Trademark Office (“USPTO”).
Therefore, although a U.S. Trademark Registration is not required in order for a trademark to be protected, obtaining a U.S. Trademark Registration does provide advantages to the owner. A U.S. Trademark Registration provides nationwide rights, in all 50 states, in a trademark as well as legal benefits should the mark be infringed. A U.S. Trademark Registration may also block others from registering a similar mark for similar goods/services.
What to do?
The first step in determining whether a company or individual may adopt a certain trademark in the U.S. is to perform a trademark search. A trademark search is performed to determine the registrability and/or availability of a mark for use without infringing the rights of third parties. In view of the fact that the U.S. recognizes unregistered, common law uses of trademarks, it is important to search active U.S. trademark filings in the USPTO and to search unregistered trademark uses, such as performing a Internet search engine search.
If, based upon the results of the trademark search, the trademark appears available for use and registration in the U.S., the next step is to file a U.S. trademark application. For Applicants located outside the U.S., there are two options for filing a trademark application with the USPTO:
1. A national U.S. trademark application filing, filed by a U.S. trademark attorney; or
2. An International Registration designating the U.S.
There are advantages to both types of filings, and it is suggested that you consult your local intellectual property attorney for advice as to the best filing for your situation.