Trademark registration in the United States

A Trademark Registration in the United States is a legal action that must be taken at the time of making a commercial sale of a product with a new image, this is optional in other countries; however, the United States requires it for commercial competitiveness and legal validation.

In the legal continuity of a Trademark, the United States is a country with possibilities of registrations for various types of trademarks; however, the rights of the same go directly to the person (or company) that has made the first use of the trademark that is being registered and that also continues to do so within the country.

Trademark registrations in the United States are not mandatory but indispensable, the enjoyment of the legality of a trademark or company symbol plays a very important role when talking about legal power and ownership of a design.

Among the reasons why it is necessary to have your Trademark registered in the United States we have:

Protection against Third Party Appropriation: By registering a trademark we are directly preventing third parties within the United States from taking advantage of your lack of registration and taking it as theirs, in addition, we can also have legal power to sue for infringement or directly collect royalties for a permitted use.
Trademark Infringement: Protection against any trademark infringement directly stipulated in the registrations.
In addition to this, we must mention that trademark registrations in the United States are not attached to the rest of the world; therefore, this will not prevent neighboring countries from appropriating your trademark if it is internationalized.

Fortunately, the islands that are associated with the United States of America, with the exception of Puerto Rico, also validate your right as a legal trademark owner, these are: American Samoa, Guam, and the U.S. Virgin Islands.

Trademark registration in the United States
Trademark registration in the United States

Process and implementation of trademark registrations in the U.S.

The registration process is handled in different ways for a specific trademark, since the United States is very precise regarding the use of colors and their distribution, therefore, we have the following:

  • Trademark registrations with word color: Trademarks that are registered with a color attached must be filed with the logo in this specific color and be limited only to the use of such trademark with the colors that have been added, no more.
  • Trademark registration without color limitation: In case the author decides to have a specific logo and be able to use it in an infinite number of colors, the U.S. Trademark registrations specify that the same logo or symbol be presented in black and white, without any type of color that represents it.
  • Combination Trademark Registration: If your trademark has a mixed characterization, the author will only have the exclusive right to the trademark in such format and will not be able to claim the nominative or unnamed design, unless such author registers another trademark where it is specified.

Complications and Actions in Trademark Registrations in the U.S.

If you are about to register a trademark and are logically concerned about how others may profit from it, it is worth noting that registration allows you to take legal action as long as you have registered the mark as your own. The chances of success may vary depending on the case.

If a trademark is not registered on time and a third party registers it, you can appeal to a counter action as long as you have evidence of it, these are costly processes that for economic reasons it is better to avoid making a timely registration of the trademark.

Oppositions have a defined time to be carried out and it is 30 days after publication in the trademark gazette, if the plaintiff does not do it within such term, its application is denied.

Legal duration and renewals
Legal duration and renewals

For Trademark registrations in the United States, the legal time of validity of a trademark as its own is 10 years, this time is counted directly from the moment the trademark is registered and can be renewed indefinitely by the author as long as it is done before the expiration date.

Renewals are possible as long as they are made 12 months before the expiration date, there is a grace period of 6 months after the expiration of the trademark but it is considered directly as a late renewal and carries a compensation cost.

When having a registered trademark, it must be registered and followed up in order to avoid the hoarding of the same. The registration of a trademark may be cancelled if it has not been used for 3 consecutive years and without proof of operation.