Top Tips To Achieve A Successful US Trademark Registration

Nadaline Webster,

The pursuit of the American dream is not limited to those residing within her borders. The enduring appeal of 'making it' stateside permeates many sectors of society. It is difficult to pinpoint the source of the attraction unilaterally but one thing is for sure - it isn't easy!

This point is illustrated beautifully by the international music industry. Recording artists who have achieved massive success in their home and other countries can still struggle to achieve a modicum of that fame in the United States. Australian singer, Kylie Minogue has become a household name in many countries around the globe over a more than 25 year career. While she has achieved a substantial following in the US, achieving the top status has remained elusive.

Last year, China was predicted to knock the US off the top spot of the world’s largest retail market but with an estimated $4.823 trillion of total sales on offer, the American market remains a key target for any multinational company. Crucial to the development of a strong sales strategy is the ability to build and protect strong brands and this can prove the first stumbling block for those less experienced with the US trademark registration system.

The starting point for many seeking a US registration from overseas is the Madrid System overseen by the World Intellectual Property Office (WIPO) in Geneva. It provides a relatively inexpensive and streamlined system for international trademark registrations. Of the applications received at WIPO last year, 21, 276 applications designated the US, making it the third most popular region. Of those applications, the US Patent and Trademark Office (USPTO) issued provisional refusals to 19,855 of them.

To help combat some of the issues, last week TrademarkNow's Tiffany Valeriano hosted a webinar with expert guidance provided by Randy Michaels from the Tennessee based law firm, Trust Tree and Elyssa LeFevre Chayo of IP consultancy Firm Forward. The webinar provided a great opportunity to get an overview of the US trademark registration system and pick up invaluable tips when preparing your application to avoid the dreaded first office action >> View the recorded webinar!

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