table of contents
About trademark registration in the United States
The United States of AmericaThe following information is provided and explained to help you protect your trademark rights.
We hope that this page will be of assistance to you in protecting your intellectual property overseas. Please help us.
*＜Estimated time period from US trademark application to registration＞ *As of August 2023
・The period from application to registration is as follows:14.6 monthsis expected.
Trademark rights in the United States
A. Regarding the subject of trademark registration (federal trademark registration)
(1) Type of trademark
1) Product trademark
2) Service mark (service trademark)
3) Collective trademark
4) Certification trademark
(2) Targets of protection for trademarks that can be applied for
According to the interpretation of American trademark law, any words, names, symbols, letters, numbers, slogans, emblems, patterns, designs, or combinations thereof, as well as the following special types of trademarks, can be registered:
- Three-dimensional [3D] mark
- Sound mark
- Motion mark
- Color mark (trademark consisting only of colors)
- Position mark
- Hologram mark
- Olfactory mark
- Touch mark
- Taste mark
- Trade Dress
B. usage principle
(1) Registration principle and usage principle
In Japan, the ``registration principle'' is adopted, in which trademark rights arise only when a trademark is registered. On the other hand, the United States has a "use principle" system in which trademark rights arise only through the use of a trademark.
- By adopting the usage principle, even if a trademark is used without being registered, common law rights arise in the region where it is used. On the other hand, even if a trademark is registered, if it is not used for a certain period of time, it will be considered abandoned.
- In principle, registration will not be approved unless proof of genuine use is submitted between application and registration.
(2) Definition of “use” under U.S. trademark law
“Use in Commerce”: bona fide use of a mark in the ordinary course of commerce and not merely to reserve rights in the mark (Trademark Law Section 45) (15 USC §1127))
In a transaction, it refers to attaching a trademark to a product or using a trademark in connection with the product, and advertising use (use that is not physically connected to the product/packaging) falls under use in the case of a product. plug. A service mark (service trademark) is also considered to be used for advertising purposes.
(3) Timing of submitting declaration of use
In order to maintain trademark rights, you must continue to use the trademark and submit evidence/affidavit to the USPTO.
◆Affidavit of use (Article 8) [=§8 affidavit]
- For applications other than those based on Japanese trademarks, a "Statement of Use" must be submitted at the time of registration. In addition, during the 5th to 6th year after registration, an affidavit of use must be submitted every 10 years when renewing trademark rights, and proof of use must be submitted a total of 3 times before the first renewal. .
- By requiring the applicant to submit declarations of use multiple times in this way, the "usage principle", which is a principle of American trademark law, is thoroughly enforced.
◆Affidavit regarding the incontestability of trademark rights (Article 15) [=§15 affidavit]
- During the 5th to 6th year after registration of a trademark in the United States, it is possible to submit a declaration of incontestability of trademark rights (Article 15 Declaration of Incontestability). Procedural burden and costs can be reduced by submitting the Article 5 declaration of use for the 6th and 8th years above at the same time.
C. About trademark application
Trademark applications are filed with the USPTO (United States Patent and Trademark Office). In order for applicants (individuals, corporations, etc.) who do not have a domicile in the United States to carry out trademark-related procedures, they must be represented by a qualified attorney in the United States.
For example, the following trademarks cannot be registered:
- Descriptive indications, functional indications (explanation of product characteristics, quality, etc.), geographical indications, generic names, etc.
- Immoral, deceptive, or defamatory trademarks
- Trademarks that include the flag or emblem of the United States, a U.S. state or municipality, or a foreign country
- Trademark indicating geographical name
- Trademarks that include a name indicating a specific individual, etc., or trademarks that are nothing more than a surname
- Trademarks that are similar to other people's trademarks (trademarks that may cause confusion of origin with other people's trademarks)
(1) Application
When applying, you will need to prepare the following documents:
- Drawing (trademark sample) *Not required when using standard characters
- Description of goods and services (classification, description of designated goods/services)
- Applicant's name and address
- Filing Basis (basic information of application)
- Government fee (USPTO filing fee)
(2) Classification (goods or services)
In the US examination, a specific description of the product/service display is required. It is necessary to apply for each specific notation/subordinate concept, rather than using a comprehensive notation like Japanese trademarks.
(Example: Notation such as "general concept, namely, specific product name."
In addition to "namely," other words such as "consisting of," "particularly," and "for use in" are also accepted. )
(3) Examination - Registration
If the USPTO examiner determines that registration is not possible, you will be notified of the reasons for refusal. The response period is 3 months (one additional 3 month extension possible).
As a result of the examination, if it is determined that the registration is possible, a public notice will be given and a third party will be given the opportunity to file an objection.
If no opposition is filed during the opposition period, or if it is unsuccessful, the trademark will be registered.
An "application based on intention to use" can be registered by submitting an oath of use, etc. within 6 months (extension possible) from the issuance of the registration permission notice.
(4) Term of existence
It is as follows.
- 10 years from the date of registration
- Renewable every 10 years
- Even if you miss the renewal deadline, there is a 6-month grace period.
(5) Other points to note
In addition to the main registration, which is a federal trademark registration, there is a system called supplementary registration. For example, even if the main registration is rejected as a descriptive indication, by switching to a supplementary registration, you can enjoy certain protections, although the rights granted are limited compared to the main registration. In order to receive supplementary registration, the application must be based on actual use or based on foreign registration.
If a trademark has not been used for three years, the trademark registration may be canceled by a third party filing a non-use cancellation trial.