An Overview of US Trademark Registration

Nadaline Webster,

The United States Patent and Trademark Office (USPTO) governs the registration and management of trademarks at a federal level throughout the US. Separate to the federal system, each state operates a local trademark registration service for businesses operating within a limited location and which perhaps don't require the additional protection that a federal registration would provide. While the state system varies from state to state, in some cases, these state registers link to the federal system. A state registration in Washington DC, for example, will qualify for a federal registration. The USPTO provides a useful list of state registers here.

The legal basis for trademark registration in the US is provided by the Trademark Act of 1946 (As Amended) more colloquially known as the Lanham (Trademark) Act. It is named after Fritz G. Lanham, a Representative from Texas and was ushered into law under the signature of President Truman. Prior to the enactment of the Lanham Act, a number of limited protections were provided to business and brand owners but these were eventually found to be at odds with the Constitution and set aside by the new act. Many valid registrations from before 1946 can be found in the USPTO database and while it is rare, disputes arising in connection with these venerable trademarks can require an examination of the preceding laws.

The federal registration system provides a number of disparate registers to provide the best possible protection to suit a variety of needs and circumstances. The Principal Register, while requiring the highest bar of requirements for registrability, also provides the highest level of protection for brands available in the US. For those brands that do not qualify for federal registration on the Principal Register, the Supplemental Register can bestow some protections. In some cases, trademarks availing of protection on the Supplemental Register can later qualify for registration on the Principal Register. For example, where a mark is too descriptive to acquire registration on the principal register, it can be registered on the supplemental register. Should the trademark later acquire distinctiveness for the goods and services for which it is registered, it may at that stage be qualified for registration on the principal register.

Federal or state registration is not the only available protection for brand names in the US. The United States operates a 'first-to-use' system which recognises the rights of the first person to use (and continue to use) a trademark or brand for commercial use. However, it should be noted that the protections conferred by this 'common law' system are not as robust as those provided by registration of the mark in question. Use of the mark remains essential regardless of the type of protection you are entitled to avail of. You can file an trademark application on an 'intent to use' basis but use of the mark must be shown within a five year period. There are, of course, exceptions to this rule - where a trademark is destined for use in the branding of a pharmaceutical product, for example, delays in the approval process can can cause difficulty.

The length of time it takes to register a trademark can vary wildly from region to region around the world and it also depends on the registrability of the mark itself. Outside of registrability concerns, the USPTO has proven to be remarkably consistent in establishing estimated time frames for likely registration - as illustrated in the USPTO Performance and Accountability Report 2016. Over the past almost ten years, the average time for the successful federal registration of a trademark is under 12 months with first office actions indicating registrability issuing in less than 3 1/2 months.

Despite the efficiency of the USPTO itself and the desirability of obtaining a federal registration in the US both domestically and from further afield, the volume of first office actions issued is high with the USPTO issuing the highest number of preliminary refusals to international applicants utilising the Madrid System. To learn more about the US system and gain insider tips on successfully registering your trademark in the US, click here to register for our webinar where seasoned experts can guide you through the process!

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