Five facts you need about US trade marks


Date: 1 February 2012

At first glance, registering a trade mark in the United States can seem confusing, especially to companies from abroad. But with the guidance of a US trade mark attorney, it can be smooth and easy.

As in the UK, the US trade mark registration process is comprised of several steps. First, conduct a comprehensive US trade mark search to make sure no one else holds a claim to your intended trade mark. Then draft and file a trade mark application with the US government. The government will review the application and issue registration (if approved) within 8-12 months.

Sounds simple. Nonetheless, many misunderstandings surround the process of applying for and maintaining a US trade mark. Here in Washington DC at Gerben Law Firm, we often see confusion from our international clients. To help clear this up, we’ve compiled five facts that any foreign company should know before filing for a trade mark here in the United States:

  1. In the US, there are three types of trade marks: federal, state and common law. Your search should include all three types to avoid potential conflicts arising in future. For example, even if you receive a federal trade mark registration, a pre-existing state or common law trade mark could still challenge your ability to use the trade mark in the US.
  2. You do not need to be a US citizen or have a US-based business to register a trade mark with the US government.
  3. You do not physically need to be in the US to register your trade mark. Filing can be done online, and even your names can be signed electronically, making the US trade mark application process easy for companies worldwide.
  4. It takes longer for the US government to review and issue the trade mark than it does in many other countries. In the US, it is usually six to eight months before you receive a response from the government.
  5. US trade mark applications are assigned priority based on the order in which they are received. This means that if you file an application for your trade mark , and someone else files after you, you will be first in line for that trade mark . If yours goes through, then theirs will be refused. If there is a problem with your application and it must be re-filed, then you lose that priority, so they would get ahead. By making sure everything is done properly the first time, you can avoid such a situation.

These are just five of the most common issues we’re asked about by our international clients, and there are many other things to consider when filing an application. For more information or to begin the US trade mark registration process, contact an experienced trade mark attorney at Gerben Law Firm, PLLC.

Josh Gerben of Gerben Law Firm is an experienced trade mark attorney, serving 18 countries worldwide.

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