Protecting Your Brand in the U.S.
To protect your brand in the U.S., it is important to file and register a trademark with the United States Patent and Trademark Office (USPTO). Like in Europe, a trademark helps identify the source of your goods or services and helps guard against fraud and infringement. The USPTO provides federal trademark registration across the entire U.S.
The first step in acquiring a trademark in the United States for a foreign company is to hire a U.S. attorney. Foreign-domiciled trademark applicants are required to use a U.S.-licensed attorney to file trademark-related submissions with the USPTO. If a company has already filed to register a trademark in the EU, submitting an application to the USPTO within six months of the EU application's filing date will allow the company to use the priority date of the EU application. The foreign basis for registration can also be used in the U.S. after this six-month period.
Note that some U.S. trademark applications require actual use of the trademark with U.S. consumers before registration is allowed. For new applications, a company must determine the basis for its application: whether it is for current use or intended for future use. For an actual use basis, you must be able to prove that your mark is already used in commerce in the U.S. This is done with specimens, or real-life examples of the mark used in the U.S. marketplace, provided to the USPTO with the initial actual use application. For intent to use, the specimens will be submitted in the future; however, registration will not occur until the specimens are actually submitted.
Trademark renewals may require additional specimens demonstrating use with U.S. consumers. The first renewal is due after five years, and subsequent renewals must be filed every 10 years thereafter.
Disclaimer:
This article is a form of attorney advertising. Hodgson Russ LLP provides this information as a service to its clients and other readers for educational purposes only. Nothing in this blog should be construed as, or relied upon, as legal advice or as creating a lawyer-client relationship.