Trademarks in the United States

Competent Authority

• Office Name: United States Patent and Trademark Office (USPTO).
• Working Language: English.
• System Type: National federal registration system. (The US is also a Contracting Party to the international Madrid System).

International Treaties

• Paris Convention: Member. Priority can be claimed under Section 44(d) within 6 months from the initial foreign filing date.
• Madrid Protocol: Member. Foreign applicants can extend protection to the US under Section 66(a) via an International Registration (IR), and US owners can use the USPTO as an Office of Origin.

Applicant Eligibility & Representation

• Eligible Applicants: Individuals, corporations, partnerships, LLCs, associations, and other legal entities.
• Local Representation / Agent Requirements:
• Foreign Applicants: All foreign-domiciled applicants and registrants (individuals or entities whose principal domicile or place of business is outside the US) must be represented by a representative who is licensed to practice law in a US jurisdiction.
• Power of Attorney (POA): A formal notarized or apostilled Power of Attorney is not required. US representatives file an electronic appearance of counsel / power of attorney within the USPTO filing portal.

Online Application & Search Database

• Electronic Filing: Mandatory via the USPTO’s Trademark Center / TEAS electronic filing platform.
• Public Search Database: The USPTO provides a free public search system (Trademark Search system / formerly TESS) to search pending and registered federal trademarks.

Registrable Mark Types

• Standard & Non-Traditional Marks: Word marks, stylized logos/design marks, slogan marks, 3D product configurations/packaging, color marks per se, sound marks, olfactory (scent) marks, touch marks, and motion marks.
• Translation & Transliteration: Applications containing non-English words or non-Latin scripts must include an English translation and an accurate transliteration (phonetic spelling).

Classification System

• Classification Standard: Nice Classification system.
• Multi-Class Applications: Supported.
• Identification of Goods/Services: The USPTO strictly enforces explicit and narrow descriptions of goods/services. Broad class headings are generally rejected. Applicants are encouraged to select terms from the official USPTO Acceptable Identification of Goods and Services Manual (ID Manual).
• Class Fees: Fees are charged per international class.

Examination

• Absolute Grounds: Examined for inherent distinctiveness, genericness, functionality, and descriptive or deceptive qualities.
• Relative Grounds (Prior Rights): The USPTO conducts an ex officio examination for confusing similarity against prior registrations and pending applications under Section 2(d) of the Lanham Act.
• Office Actions: Examiners issue official actions (Office Actions) if issues arise. The standard deadline to respond to a substantive Office Action is 3 months from the issue date (with an option to request a 3-month extension for a fee).

Publication & Opposition

• Publication: Marks approved by examiners are published in the weekly online Trademark Official Gazette (TMOG).
• Opposition Period: 30 days from the publication date. Opponents may request extensions of time to file an opposition (up to 120 days total).
• Eligible Opponents: Any party who believes they would be damaged by the registration of the mark.
• Procedure & Fees: Administrative proceedings are conducted before the Trademark Trial and Appeal Board (TTAB). Official filing fees apply per class.

Timeframe & Acceleration

• Average Timeframe:
• Section 1(a) (Use in Commerce): ~12 to 18 months from filing to registration if no oppositions or major Office Actions occur.
• Section 1(b) (Intent-to-Use): ~14 to 24+ months, as registration occurs only after a Statement of Use (SOU) or Amendment to Allege Use (AAU) with specimens is submitted and accepted.
• Expedited Examination: Available under narrow circumstances by filing a Petition to Make Special supported by compelling evidence (e.g., active litigation or severe commercial hardship).

Official Fees

• Base Application Fee: USD $350 per class.
• Statement of Use (SOU) Fee (Section 1(b) filings): USD $100–$150 per class (depending on submission path).
• Section 8 Declaration of Use (Years 5–6): USD $225 per class.
• Section 15 Declaration of Incontestability (Optional): USD $200 per class.
• Combined Section 8 Declaration & Section 9 Renewal (Years 9–10): USD $525 per class (USD $225 Section 8 + USD $300 Section 9).
• Notice of Opposition Fee (TTAB): USD $600 per class.

Source: United States Patent and Trademark Office Fee Schedule.

Term of Protection & Renewal

• Protection Period: 10 years calculated from the registration date.
• Maintenance & Renewal Requirements:
• 5th–6th Year: Must file a Section 8 Declaration of Continued Use along with current specimens. Option to file Section 15 for incontestability if applicable.
• 9th–10th Year: Must file a combined Section 8 Declaration of Use and Section 9 Application for Renewal.
• Every 10 Years Thereafter: Combined Section 8 & Section 9 submissions.
• Grace Period: A 6-month grace period applies after the 6th-year and 10th-year statutory deadlines, subject to late surcharge fees.

Use Requirements & First-to-File vs. First-to-Use

• First-to-Use vs. First-to-File: The US is strictly a First-to-Use jurisdiction. Common law trademark rights arise from actual commercial use. Federal registration requires "Use in Commerce" (interstate commerce or commerce with the US).
• Filing Bases:
• Section 1(a): Actual use in commerce (requires specimens and first-use dates at filing).
• Section 1(b): Intent-to-use (requires a Statement of Use with specimens prior to registration).
• Section 44(d) / 44(e): Foreign application priority / foreign registration basis.
• Section 66(a): Madrid Protocol extension.
• Non-Use Cancellation: Registrations are subject to cancellation if abandoned (typically 3 consecutive years of non-use creates a rebuttable presumption of abandonment). Third parties can also challenge registrations via TTAB expungement or reexamination proceedings for non-use.

Post-Registration Transactions

• Assignments: Must be recorded electronically using the USPTO Assignment Center (ETAS/Assignment Center) to be valid against subsequent bona fide purchasers.
• Licensing: Recording license agreements with the USPTO is optional, but proper control over licensee quality is required under common law to avoid loss of trademark rights ("naked licensing").
• Name / Address Changes: Must be updated through the USPTO portal to keep ownership records accurate.

Enforcement & Legal Remedies

• Tribunals & Courts:
• Trademark Trial and Appeal Board (TTAB): Administrative tribunal handling oppositions, cancellations, expungement/reexamination proceedings, and ex officio refusal appeals. (Does not rule on infringement damages or grant injunctions).
• US Federal District Courts / State Courts: Jurisdiction over trademark infringement, unfair competition, passing off, federal dilution under the Lanham Act, and injunctive relief.
• Well-Known Marks: Protected under the Federal Trademark Dilution Act (FTDA) / Trademark Dilution Revision Act (TDRA) for famous marks against dilution by blurring or tarnishment.
• Customs Enforcement: Registered trademarks on the Principal Register can be recorded with U.S. Customs and Border Protection (CBP) to seize infringing counterfeit goods at ports of entry.

Country-Specific Risks & Practical Notes

• Specimen Audit & Strict Standards: The USPTO maintains rigorous specimen standards. Mockups, digitally altered images, or website screenshots without order/checkout mechanisms are routinely rejected as invalid specimens.
• Mid-Term Maintenance Deadlines: Unlike most civil law jurisdictions where only 10-year renewals exist, the US requires a Section 8 filing between years 5 and 6. Failure to file the Section 8 Declaration results in automatic cancellation of the registration.
• Foreign Representative Mandate: Foreign filers cannot file or manage applications directly; attempting to file without US-licensed counsel leads to formal Office Action refusals.

This article is for informational purposes only and does not constitute legal advice or consultation. To receive personalized and in-depth guidance tailored to your specific situation, we invite you to schedule a consultation.

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