Before you apply
Before you apply for a trade mark in the US you must decide on your trade mark format. There are a few types of trade mark in the US and you may choose to register one or more of these depending on your IP strategy.
- A standard character mark is text only, without design, and in no particular colour, size or font. This is the most flexible of the marks as it provides protection for the word itself without limiting the mark to a specific font, style, size or colour. For example:
TARGET, NIKE, VW
- A stylised/design mark, could include graphics, logos, colour and stylisation. For example:
Trade mark owners: Target Corporation, Nike Inc, Volkswagen Group. Image source: United States Patent and Trademark Office.
- A sound mark. Think of the Intel audio signature. It’s a distinct sound which identifies a good and/or service.
- Other non-traditional marks include such as colour, scent, taste, touch (rare), and motion also may be registered in the US.
- Product design and packaging also may be registered in the US.
- Certification marks. These marks show consumers that your goods and/or service meet certain standards.
If you are applying for a stylised or design mark, your application must include a clear ‘drawing’ or depiction of your trade mark. For a sound mark, you must submit the actual sound of the mark in one of the approved formats, such as .wav or .mp3.
If you are applying for multiple trade marks, you will need to submit these individually; the USPTO will not process your application if it includes more than one drawing.
When you are applying for any of the above trade marks, a written description of the trade mark must also be provided.
When you apply for a trade mark you must provide a description of the goods or services on which you are using or intend to use your trade mark. These goods and services need to be identified into one or more of the goods and services classes.
Before you begin, think carefully about the goods or services you want protected by your trade mark. Although you can modify the wording in your original application to clarify the exact nature of your goods and services, you cannot add goods and services to your application. If you wish to add extra goods or services you will need to file a new application to cover the new goods or services. So, getting the classification right when you apply will save you time and money.
This is a critical part of your trade mark application. For more information take a look at our selecting your goods and services section.
Once you have decided what type of trade mark you want and which goods and/or services you wish to apply for you should do a search on the USPTO’s Trademark Electronic Search System (TESS). It is important to make sure that there isn’t a related trade mark already registered or applied for in relation to same or similar goods and/or services. Understanding what the USPTO will consider to be similar may be difficult – examiners will consider a number of factors to determine whether a trade mark is likely to cause confusion with a trade mark which is already filed. As trade mark rights are based on use in the US, a “full search” of other sources of trade marks may be advisable, e.g., state registries, internet, domain names, and so forth.
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.
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Ready for a trade mark in the US?
This checklist will help get everything ready to apply for a US trade mark. If you’re using a trade mark attorney this may also brief them on your requirements.