United States: what are the options to protect a trademark?
When a company wants to export its activity to the American market, it is essential that it think about protecting its brand. Indeed, the protection of a trademark being territorial, the registration of a trademark in France will have no value in another country. There are several ways to protect your trademark in the United States.
- National registration
The registration of a trademark in the United States is done at the national trademark office: the USPTO (United States Patent and Trademark Office).
- Types of registration
There are two types of registrations: the registration on the “Principal register” and the registration on the “Supplemental register“.
Registration in the principal register
A trademark registered in the principal register provides maximum protection because its owner is presumed to be the sole owner, which gives him the possibility to sue any person using an identical or a similar trademark.
Furthermore, registration in the principal register provides the owner with the advantage of benefiting, in the event of a dispute, from a presumption of validity of his trademark.
To register a trademark with the USPTO on the principal register, several conditions must be met, the most important being the criterion of distinctiveness.
Registration in the supplemental register
Registration on the supplemental register is available when a trademark is not considered sufficiently distinctive. Such a registration does not provide as much protection as a registration the principal register.
- Modes of registration
There are also two modes of registration: filing based on Intent-to-Use and filing based on Prior Use
Intent-to-Use Application
This registration is made when the trademark has not yet been used on the US market. However, at the time the trademark is filed, the owner must start using the trademark in the United States within six months.
The protection of the trademark extends over a period of 10 years, renewable indefinitely.
Use in Commerce Application
This system makes it possible to register a trademark whose use is already effective. However, the applicant must provide proof of use of the trademark at the date of filing. This proof can nevertheless be difficult to provide.
The USPTO allows proof of use of a trademark when :
– the mark is inscribed on the goods or the packaging of the articles, or is related to the goods and services;
– and the goods and services to which the mark is affixed are sold in at least two states in the United States.
- Protecting your trademark in the United States: is the Madrid System the best option?
The Madrid System allows a national trademark to apply for protection in a maximum of 122 member countries of the Madrid Union by paying a single set of fees, based on a single application. It is a single procedure that results in a bundle of national trademarks. This registration system is managed by the World Intellectual Property Organization (WIPO).
The use of this international trademark system has several advantages for the owner of a trademark: it is necessary to prepare only one file, to be submitted to a single office, in a single language and to pay a global fee. It is a simplified and centralized procedure, which generally leads to a reduction in costs. It also makes it possible at any time to extend the scope of protection to other member countries of the Madrid Union that were not initially designated in the application. It is particularly interesting when one wishes to extend the protection of a trademark in different countries.
The United States became party to the Madrid Protocol on November 2, 2003. It is therefore part of the Madrid Union.
When a company exports internationally and wishes to protect its trademark in different countries, it can choose, often rightly since it has many advantages, to use the Madrid System. However, this is not necessarily the best option to protect a trademark in the United States.
However, it should be remembered that the Madrid System does not bypass local laws, objections may be raised by national offices as well as third parties within each country concerned and no application is guaranteed to succeed.
International applications cannot be entered in the Supplementary Register.
In addition, for a period of five years, the international trademark is obligatorily attached to a national trademark, for example a French trademark. If the latter is cancelled, all designations in the different countries of the Madrid Union are cancelled with it.
Several options are therefore available to a trademark owner who would like to protect its trademark the United States. Depending on the level of its international exploitation and the characteristics of the trademark, the possibilities, costs and conditions of each system will have to be studied and the one that is most suited to the project will be selected.
