The process is settled down in the Trademark Act of 1946, which specifies all the conditions and steps to be completed in order to get the mark fully and legally protected. Moreover, the United States (US hereinafter) is a Contracting Party of the Madrid Agreement Concerning the International Registration of Marks and its Protocol, known as the Madrid System, which aims to provide international protection to domestic marks.
The US Patent and Trademark Office (USPTO) is the federal agency in charge of managing and administering the trademark proceedings, with the power to admit or deny a trademark registration. The USPTO, located in Washington, DC, is an agency within the Department of Commerce.
Domestic holders (individual or juristic persons) of trademarks used in commerce in the US, may request legal protection for their marks by filling out an application and a verified statement in the US Patent and Trademark Office, and paying the applicable fee, which ranges from $225 to $325, depending on the process.
Before starting a filing in the USPTO, the mark must posses one of the legal shapes needed in order to be registered, such as a standard character mark, a stylized mark or a logo. Also, a mark can be registered as “use in commerce” when it is already used by its holder or as “intent to use”, when commencing the business.
The process starts by verifying if the mark is already registered, which can be accomplished by using the Trademark Electronic Search System, operated by USPTO. If the trademark is not registered, the holder can start the application process using the electronic system of USPTO. Although the intervention of a lawyer is not required by law, it is always advisable and useful to contract the services of a professional in this matter, since the correct application determines the full legal protection of the mark and the process itself is not an easily understandable topic.
Foreign companies seeking protection of their marks in the US can use the Madrid System. The Protocol Relating to the Madrid Agreement provides a cost-effective and efficient way for trademark holders to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, and in one currency. A benefit of this system is that no local agent is needed to file the application. However, each country designated for protection reserves the right to determine whether or not protection for a mark may be granted. Once the trademark office in a designated country grants protection, the mark is protected in that country just as if that office had registered it. The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization’s International Bureau.
With the accession of the Lao People’s Democratic Republic in December 2015, a total of 97 countries (encompassing 113 territories) made up the Madrid System.
An important note to bear in mind for those foreign companies seeking to export to the US is the rule contained in the Trademark Act of 1946 regarding imported merchandise. This rule establishes that no article of imported merchandise can: 1. Copy or simulate a name of any US trader or manufacturer (or foreign trader or manufacturer protected in the US) or 2. Copy or simulate a trademark register in the US, or 3. Bear a name or mark to induce the public to believe that the article is manufactured in the US or in any other country different than the country where it is manufactured. Any imported article under one of this situations shall not be admitted to enter the US by the Customs and Border Protection agency.
Registering a mark can be time-consuming but at the end of the day, obtaining full legal protection for items sold in the United States is a mandatory step for those serious companies approaching this highly competitive market.
Emilio Laguillo, Business Partner, How2Go US
DISCLAIMER: The content provided in this article is not a legal advice or any other professional advice. This article is written only for informational purposes. Under no circumstances neither the author nor the web site where it is published are liable for any damages or any other harm or loss arising from following indications commented in this article. The reader should request professional advice when dealing with the matters covered by this article and acts always by its own responsibility.