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USA Trade Mark Registration


Lawdit Solicitors - Expert Author

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Registering a trade mark in the US is in some ways a more complicated process than the UK or EU. Firstly the US Trademark Office requires that the classifications listing for the goods or services on which the mark will be used be more specific than is required by either the UK or EU. For example the UK Trade Mark Registry will accept computer software as a classification whereas the US Trademark Office deems this to be too broad and will only allow the classification if it includes the function and in some case the field in which the software is used.

Another more strenuous requirement which the US Trademark Office imposes is that the applicant must provide evidence that the mark which is the subject of the application is being used in the US interstate commerce i.e. that the goods or services bearing the mark are available and being sold within the US. It is possible to file the application on the basis of an intention that it will be so used but it will not be allowed to reach registration until the necessary evidence has been provided.

It is possible for foreign applicants to delay this second requirement for 5 years through filing their application under an international agreement known as the Madrid Protocol instead of filing the application directly with the US Trademark Office. All that is required upfront is a declaration of intention to use the trade mark within the US. In order to make use of this route the applicant must first have a trade mark application or registration in their home country. This application or registration is then effectively used to attempt to extend the same rights to the other countries which are members of the Protocol which the applicant chooses. As a result in order to take make use of this system the details of the international application must match the details of your UK/EU trade mark in all material details i.e. mark, owner and classifications; it is possible to include less classes but you can not add classes.

However there is some element of risk associated with using an application as a basis rather than using a registration. This is due to the fact that the international application will be wholly dependant on your UK/EU application so that if for some reason that application fails to reach registration, your international application will also fail.

About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.

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Article Published/Sorted/Amended on Scopulus 2007-07-25 22:23:24 in Legal Articles

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