Trademark Registration in the United States (USA)

Before filing a trademark application in the U.S. (USA)

A product I’ve been involved in since its development is finally making its way to the U.S.! I wonder if one day Hollywood stars will be able to get their hands on it~!

Congratulations! Your dreams are growing!
Don’t forget to apply for your trademark in the U.S.! It’s a good idea to learn the basics of registering a trademark in the U.S. beforehand!

The U.S. is a big market and probably one of the most important countries for those who are thinking of expanding their business overseas or for companies.
Here we will introduce basic knowledge about trademark registration in the U.S., as well as information and precautions that you should know.

The greatest feature: “first to use” system

The most distinctive feature of the U.S. trademark system is that it is based on the “first to use” system.
In Japan, trademark rights arise when a trademark is registered, “first to file, first to register” system is adopted. However, “first to use” system is that trademark rights arise when a trademark is used.
Under the “first to use” system, trademark rights arise when a trademark is actually used, even if the trademark has not been registered. On the other hand, it is important to note that even if a trademark is registered, failure to use it continuously is considered a waiver of the right.

Since the system is based on the premise that the trademark is in use, a declaration and proof of actual use of the trademark must be submitted to the U.S. Patent and Trademark Office (USPTO) when registering or maintaining a trademark registration (with a few exceptions).

Therefore, when filing an application in the U.S., it is necessary to consider the possibility of using the trademark within a few years.

Advantages of registering a trademark

If use gives rise to rights, it does not mean that trademark registration is unnecessary.
In the case of an unregistered trademark, for example, if you discover that someone else is using your trademark, the extent to which your trademark rights are protected will become clear in court. You must also prove yourself in court that you have acquired rights to the trademark through use and that you are the owner of the trademark in order to be considered the owner of the trademark.

Other advantages include

• “R” mark can be affixed to the trademark and the ownership of the trademark can be asserted throughout the U.S., thereby deterring third parties from using it.
• The applicant can request customs to stop the importation of counterfeit goods.
• Obtaining “incontestability”
  　* The “Affidavits and Evidence of Use/ Proof of Use” section will discuss this later.

Thus, there are more advantages to registering a trademark than to use a trademark without registration.

Filing an application

When applying for a U.S. trademark registration, the applicant must clearly indicate that the application is based on actual trademark use or based on registration in a foreign country. Types of basis include.

(1) Use in commerce basis
This option is available if the applicant has already started using the trademark in the U.S. in international or interstate commerce.
* The definition of “use” in this case is discussed below under “Affidavits and Evidence of Use/ Proof of Use”.

At the time of application, the applicant is required to submit the date of first use of the trademark (the date when the trademark was first used in the world, including Japan) and evidence of use.

(2) Intent to Use basis
This option is available when the applicant has not yet started using the trademark in the U.S., but intends to use the trademark in the course of trade.
It is not required to be using the trademark in the U.S. at the time of filing the application, but you must begin using the trademark before registration. An affidavit of use with the evidence of use must be filed at the time of registration.
Unless an affidavit of use and evidence of use is submitted, the trademark will not be registered.

(3) foreign Applications/registrations basis
The application must have been filed or registered outside the U.S. (including Japan) and can be filed with contents within the scope of that foreign application or registration.
A copy of the registration certificate of the foreign application must be submitted.
This is an easy basis to use if you already have a trademark registered in Japan at the time of filing the application to the U.S. It is also possible to file a priority claim for the U.S. application if the application is filed in Japan first.

(4) International registration filed through the Madrid Protocol designating the U.S.
This is the case where the U.S. is designated in an application for International Registration under the Madrid Protocol. A “Declaration of Intention to Use the Mark” (MM18) must be filed at the time of filing the application for International Registration, but proof of use is not required.
In order to file an application for International Registration, you must either file a trademark application or register a trademark in Japan.

Description of designated goods/services

In the U.S. examination, a specific description of the designated goods/services is required.
The U.S. uses the International Classification of Goods and Services, which is the same as Japan, but comprehensive descriptions like those used in Japanese applications may not be accepted.

For example, in Japan, “Clothing” in class 25 is acceptable for registration, but in the U.S., it is better to use a specific description such as “Jackets, skirts, blouses, socks, mufflers” in class 25. In the case of a comprehensive description, it is acceptable to use a description such as “(superordinate concept), namely, [specific name of goods]”.
In particular, it should be noted that in the case of an application for International Registration under the Madrid Protocol, if the description of the designated goods/services in the Japanese application for the basis of trademark registration is used as is, the application may be rejected in the U.S. examination.
In addition, it is recommended that the designated goods/services that are not planned to be used be avoided as much as possible.

Affidavits and Evidence of Use/ Proof of Use

In the U.S., where the “first to use” is adopted, the submission of an affidavit of use and evidence of use to the U.S. Patent and Trademark Office (USPTO) is an integral part of the procedure, and the timing of the submission of such documents comes several times.

(1) From the time of filing to the time of registration (* depends on what is the basis of the application)
(2) Between 5 and 6 years after registration.
– Within 6 months after the issuance of the Notice of Allowance.
– This period can be extended up to 3 years.
(3) At the time of renewal (between 9 and 10 years after registration)
(4) Every renewal (10 years) thereafter

What is an Affidavit of Use?

This is an affidavit of genuine use of all the designated goods/services stated in the application. If any falsehood is found in this affidavit, it will be considered fraud, and you run the risk of invalidating the entire registration.

In addition, a “Statement of incontestability for a trademark right” (Affidavit or declaration under section 15.)” that can be submitted at the timing described in (2) above has the effect of making it impossible for a third party to dispute the validity of the trademark right, provided that the trademark has been in continuous use for five years after registration and has been used in business transactions thereafter (i.e., at present). Once a trademark is acquired incontestability for a mark registered, it can no longer be canceled due to the existence of an unregistered prior use of the trademark.

Although it is not mandatory to file a Statement of incontestability, it is recommended to do so unless there are special circumstances to make your trademark rights more stable and strong.

What is Proof of Use?

“Use in Commerce” is defined in the U.S. Trademark Law (Section 45 of the Trademark Law (15 U.S.C. §1127)) as the affixing of a trademark to or use of a trademark in connection with goods in commerce.
Advertising use (use not physically connected to the goods/packaging) is not considered use in the case of goods.
On the other hand, a service mark (service) is considered use of a trademark even when used in advertising use.
Photographs of the trademark actually used on the goods or services or a copy of the sales website should be submitted as evidence of actual use.

• on goods when—
• (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
• (B) the goods are sold or transported in commerce, and

• on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

Sounds like a lot of work since it’s quite different from the Japanese trademark system, but it’s good to know there’s a difference first! I’ll have to consult with a patent attorney familiar with trademark registrations in the U.S. to see what kind of evidence of use would be valid!

Local Agent Fees: Time Charge System

If you are applying directly to the U.S., you will need to do so through a local agent (patent firm, patent attorney, or lawyer). In our experience, the majority of patent firms in the U.S. are on a time-charge basis.
Therefore, if a person who is not familiar with trademark applications in the U.S. were to consult directly with a local patent firm, it is possible that the consultation fee alone would be too expensive due to the time charge. First of all, please consult with our firm, which has a wealth of experience in filing applications in the U.S.
We can also provide you with a preliminary filing fee estimate through our local representative.

Summary

The U.S. “first to use” is different from the Japanese “first to file, first to register”, and it may seem difficult to understand.
However, if you understand the concept of the “first to use” and prepare your application accordingly, the hurdles to registering a trademark in the U.S. are not high.
Our firm has extensive experience in filing trademark applications and evidence of use in the U.S. If you are considering entering the U.S. market, please do not hesitate to contact us. ⇒Please contact us for more information.