USA is one of the 2 top economic markets in the world. Therefore it is important that your primary marketing tool of your trade mark is protected in the short term and the long term.
US Trade Mark Applications – filing basis and registration
In the US, at the time of filing a Trade Mark application, an applicant is required to specify a basis for filing – this is either ‘use-in-commerce’ or ‘intent-to-use’. Depending on the stage of commercial development for the product in respect of which registration is sought, an applicant can follow either Section 1(a) or 1(b) of the US Trade Mark Act (the Lanham Act) for use-in-commerce’ or ‘intent-to-use’ respectively.
‘use-in-commerce’
For US Trade Mark applications filed under the ‘use-in-commerce’ basis, the applicant must be using the mark in the sale or transport of goods or the rendering of services in “interstate” commerce between more than one state or U.S. territory, or in commerce between the U.S. and another country. For goods, the mark must appear on the goods (e.g., tags or labels), the container for the goods, or displays associated with the goods. For services, the mark must be used in the sale or advertising of the services.
At the time of filing based on ‘use-in-commerce’, an applicant needs to provide the following information:
- the date of first use of the mark anywhere and the date of first use of the mark in commerce; and
- Submit a specimen (example) showing how the mark is used in commerce.
The US has strict regulations determining what is a ‘proper specimen’ evidencing use – notably invoices, announcements, order forms, leaflets, brochures, publicity releases, letterhead, and business cards generally are not acceptable specimens for goods.
Registration can only proceed in respect of goods/services for which evidence of use can be shown.
As for timing, once the opposition period expires, the USPTO will issue a Certificate of Registration for use-based applications under Section 1(a).
‘intent-to-use’
If the applicant has not yet used the trade mark in the US but plans to do so in the future, an applicant can file a US Trade Mark application based on a good faith or bona fide intent to use the mark in commerce.
A bona fide intent to use the mark is more than an idea and less than market ready. For example, having a business plan, creating sample products, or performing other initial business activities may reflect a bona fide intent to use the mark.
As for timing, once the opposition period expires, the USPTO will issue a Notice of Allowance for intent-to-use applications under Section 1(b). An applicant has 36 months from the Notice of Allowance date to submit proof of use, known as the “allowance” period, or the application will go abandoned. Every six months during the allowance period, the applicant must file either a Statement of Use or a request for extension of time to file a Statement of Use indicating a continuing bona fide intent to use the mark for the goods and services in the application. Once the USPTO accepts the Statement of Use, the Certificate of Registration will be issued.
The actual use must take place and must generate an acceptable specimen. For goods, the USPTO will accept a photo of (1) a label or package bearing the mark, (2) the mark imprinted directly on the product, or (3) the mark on point-of-sale displays. As above, invoices, announcements, order forms, leaflets, brochures, publicity releases, letterhead, and business cards generally are not acceptable specimens for goods.
US Trade Mark Applications – maintaining registration
To maintain a US trade mark registration, an Affidavit of Use (Section 8 Affidavit) or Excusable Nonuse must be filed: (1) before the end of the sixth year after the registration date or within the six-month grace period after expiration of the sixth year, and (2) within one year before the end of every ten-year period after the date of registration (or six-month grace period thereafter with payment of additional fees). The registrant must also file a Section 9 renewal application (Section 9 Renewal) within one year before the end of each successive 10-year period following the date of registration, or within a grace period of six months thereafter.
Assuming the Section 8 Affidavit and Section 9 Renewal are timely-filed as indicated above, the registration will be renewed for a 10-year term.
Trade mark service at Baxter IP
Our team of trade mark attorneys at Baxter IP can obtain and enforce strong trade mark protection throughout the world including the USA.
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