What can be protected by a trade mark?

Just like in Australia, a trade mark in the US includes any word, name, symbol, device, or any combination thereof, used or intended to be used to identify and distinguish the goods or services of one seller or provider from those of others.

A trade mark could also be a sound, a colour or even a smell in the US and some other countries. Think about it like this: a trade mark is a brand name for goods and services. 

How do I protect my brand?

When taking your brand to the US, think about whether or not trade mark protection might be suitable for you. By registering your trade mark in the US, you can protect your brand from competitors in a number of ways, including by providing notice by publicly listing your trade mark on the USPTO database; having the legal presumption of ownership throughout the US; and having the exclusive right to use the mark on or in connection with the goods/services listed in your registration.

In the US, the first business to use a trade mark on a continual basis owns the common law (unregistered) rights to the mark. However, enforcing common law trade mark rights can be difficult due to the lack of public record of when you first began to use your trade mark. 

By registering your trade mark in the US you are given legal presumption that you have the right to use the trade mark nationwide. Your trade mark will also be listed in the USPTO database and you will hold the right to file a lawsuit in federal court to stop others infringing you.

Professional advice

The USPTO requires all foreign-domiciled trade mark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the US. So if your permanent legal residence or principal place of business is outside of the US, you will need a US-licensed attorney to represent you in all trade mark matters. For applications filed under the Madrid Protocol, the requirement for a US licenced attorney does not apply to the filing of the application, but applies to any subsequent actions before the USPTO.

An IP professional may also assist you with the selection of goods and services for your application as well as searching for similar marks already on the US register and any potential conflicts.

Trade mark attorneys typically maintain relationships with trade mark attorneys and agents in other countries. You may find that your Australian trade mark attorney already has a relationship with a US trade mark attorney with whom s/he has routinely worked.

Take a look at our finding an attorney section for more information.

First to use rule

Like Australia, the US follows the ‘first to use’ rule for obtaining trade mark rights. This means that if there is a dispute between you and another party over a trade mark, whoever used it first commercially is likely to be able to claim rights, even if they didn’t register it first.

What’s the difference between trade mark protection in the US compared to Australia?

Generally, IP registration and protection in the US is very similar to Australia. However, when applying for trade mark protection in the US, you will need to provide very specific descriptions of goods and services for which protection is sought.

Therefore, if you apply using the Madrid Protocol, you should be aware that the specification used for your Australian trade mark application/registration may be considered too broad by the USPTO. Your US IP attorney can advise you about the best way to draft your application, especially regarding the specification for goods and services on which you will use (or intend to use) your trade mark. A number of Australian IP firms have associate offices in the US which can provide this advice. Additionally, you could refer to the WIPO Madrid Goods and Services Manager tool for an indication of whether your description of goods and services would be acceptable at the USPTO.

Unlike in Australia, when filing a trade mark application in the US, you will need to nominate the use of your trade mark, for example:

  • If you already use your trade mark in the US, then you nominate ‘use in commerce’.
  • If you haven’t started using your trade mark, but intend to do so in the near future, then you will need to nominate an ‘intent to use’. Intent to use must be more than just an idea that you might use the trade mark - you must be market ready or your trade mark will be refused. If you file an application on an ‘intent to use’ basis you will need to complete additional forms and pay additional fees.
  • You also may use Section 44, based on your Australian trade mark application or registration.  If you use your Australia application under Section 44(d), you need to file your U.S. application within 6 months to claim a priority date.

Do I need to have a trade mark registered in Australia?

If you are applying directly to the USPTO, you do not need to have applied for a trade mark in Australia.

However, if you wish to use the Madrid Protocol seek trade mark registration in the US, you must have already filed an Australian application or have an Australian registration. It’s important to note that under the Madrid Protocol your international application is dependent upon your Australian trade mark, known as a basic mark, for a period of 5 years. This means that if your trade mark changes within this time, your international application will be subject to the same changes.

If you file an international application within 6 months of filing the Australian application, you can also claim ‘priority’. This means, you will have the same filing date in the US as your Australian application.