The brand in the United States

How do I register my trademark in the United States? When a company expands its business in the United States, protection of its trademark in this country is essential.

Several systems exist to protect a brand at North America. Indeed, two solutions are offered to structures wishing to try the American adventure: directly deposit a brand in the US or designate this territory in a international brand.

Which option should you choose to secure your products and services? How to make deposits? What are the conditions?

The national registration of the trademark in the United States

The U.S. Patent and Trademark Office (USPTO - United States Patent and Trademark Office) offers two types of use-based filings and two types of registration.

Filing on the basis of Intent-to-Use or "Intent-to-Use Application".

It is possible to protect a brand filed in the Main Registry (offering optimum protection for a brand distinctive), while it has not been exploited in the US market, but will be in the future. At the time of filing, the registrant declares on his or her honour that he or she intends to commence serious exploitation of his or her brand within six months of the date of filing. This brand is protected for 10 years, renewable indefinitely, subject to payment of renewal fees.

After filing, the USPTO sends a Notice of Allowance to the owner. The Office then publishes the brand to allow the interested third party to file an opposition. A period of 6 months starts from the date of notification of the notice.

When it expires, there are two possible situations:

  • the depositor used his brand in the U.S.A. It informs the U.S. Office, which will definitively register the brand ;
  • the cardholder has not used his/her brand for "legitimate" reasons. It then requests an extension of the time limit in 6-month increments, up to a maximum of 3 years from the date of transmission of the notice. The USPTO proceeds with registration as soon as it receives proof of the use of the mark.

The filing based on prior use or "Use in Commerce Application".

This protection system allows the monopoly operation of a brand and therefore a quick check-in. The applicant must, however, provide proof of the use of the name or sign on the date of filing. This proof is sometimes difficult to provide. Indeed, the holder has the obligation to provide proof of the actual prior use by specimens (sale to the public of goods and services under the name or sign). brand or advertisements mentioning said brand).

The USPTO admits evidence of the use of a brand when:

  • the brand is inscribed on the products or packaging of the articles or is related to the products and services ;
  • and that the products and services to which the brand are sold in a minimum of two states in USA.

After providing these supporting documents, the filing procedure shall continue until the registration of the said mark.

A federal registration of brand with the USPTO allows you to be protected in all United States. A filing in the principal register provides optimal protection when the registrant demonstrates continued use of the brand for 5 years and that the sign is distinctive (not descriptive of the goods and services concerned). If the brand is not sufficiently distinctive, it may be registered in the supplemental register conferring limited protection (no presumption of ownership of the brand).

An alternative to the national deposit: the applicant can opt for the international brand.

The international trademark application for the USA

The holder may extend his French trademark by means of a world brand designating United States at the WIPO (World Intellectual Property Organization). Filing this application within the 6-month priority period allows you to benefit from the filing date of the French trademark and to oppose any competing filing made in the meantime.

WIPO translates the application into English and files it with the USPTO.

This filing is based on intent to use and requires a declaration of intent to use, which is not accompanied by evidence. The first proofs must be submitted in the sixth year following the registration of the mark. It is protected for ten years and renewable forever, if it is exploited.

The difficulty of the American system will be quickly overcome with the help of a patent attorney and a judicious choice of filing will result.