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Filing a trademark application and maintaining a trademark in the US

Important information on filing a trademark application and maintaining a trademark in the US, plus practical advice.

1. What types of trademark applications exist in the United States?
The mere intention to use a trademark in the US market is enough to apply for and register the trademark in the US.
You can also apply for and register a trademark in the US if you are already using that trademark in the US market. In the latter type of trademark application, you must submit proof of use (known as specimens) when filing the trademark application with the United States Patent and Trademark Office (USPTO).
A trademark application to the USPTO can also be based on a foreign trademark application. The corresponding US trademark application must then be filed with the USPTO within six (6) months from the date of the foreign trademark application. There must be an international agreement on trademark rights between the US and the respective foreign country. The advantage of this type of trademark application is that the earlier date of the foreign trademark application is treated as the date of application for the US trademark application that is subsequently filed (foreign priority basis).
There are also US trademark applications that are based on previously registered trademark applications in foreign countries. A special requirement in such cases is that the foreign trademark registration must be translated into English and notarized to accompany the US trademark application.

2. What is an “office action” in the US?
An office action by the USPTO is a request to provide information or to revise the trademark application. The time limit for responses is six (6) months from the date that the office action from the USPTO was received.
The USPTO does not accept broad class descriptions in many cases. A potential problem is that there could be a likelihood of confusion between the trademark application and trademarks that have already been applied for and/or registered. In this case, the USPTO compares the following for each of the affected trademarks:

  • Appearance
  • Wording, sound, and/or
  • Similar class descriptions

US case law can be used to challenge an allegation of potential likelihood of confusion. An office action can also be used to contend that the brand name comprises a function, purpose, or characteristic of the class descriptions in a purely descriptive manner. The USPTO does not accept any purely descriptive trademark applications.

3. How can a registered trademark be maintained in the United States?
You can prevent your registered trademark from being canceled (which is known as “abandonment”) by the USPTO if you provide timely proof (“specimens”) showing that you are currently using the trademark with respect to the registered classes in the US market within certain periods of time.
A distinction is made between proofs of use for products and those for services.

  • Proofs of use for service classes can be provided in the form of, among other things, a printout or screenshot from the current website of the trademark owner, including the date and URL.
  • Proofs of use for products include a photograph of (a) a label, (b) a hangtag, or (c) the packaging in connection with the use of the trademark in the US market. A printout or screenshot of the company’s current website, which directly shows the actual sale of the products, can also be submitted as proof of use.

4. Do I have to register a trademark in the US?
No. You can also use a trademark as a so-called common law trademark without registering it with the USPTO. A common law trademark is indicated with the ™ symbol. You can use a common law trademark in a limited geographical area and assert it against third parties.
However, it should be noted that a trademark registered with the USPTO provides greater protection under trademark law. This is because the USPTO automatically assumes that a trademark is owned by the registrant in the case of a registered trademark. Separate proof of ownership is therefore not additionally required.
The registered trademark protects against the filing of new trademarks in the US that could potentially be confused with the registered trademark. In the case of an infringement of a registered trademark, it will be easier for the trademark owner to take legal action against this in the US federal courts (such as requests for a finding of a likelihood of confusion or trademark dilution). The owner of the trademark may indicate the registration with the ® symbol. This registration symbol is commonly known and usually has a deterrent effect on people or companies who want to use the same trademark.

5. How can I take action against a possible trademark infringement?
If there is a possible infringement of a registered trademark, you can start by sending a cease-and-desist letter to your opponent. A cease-and-desist letter is used to draw attention to an infringement of a registered trademark by a third party due to a possible likelihood of confusion between your registered trademark and the third party’s trademark. A letter of this type also requests that the third party immediately cease and desist from infringing the trademark. If the infringement of the trademark persists after the deadline, you can file suit in US federal court. Higher damages can be claimed in this case, as the infringement of trademark rights occurring from receipt of the cease-and-desist letter is considered intentional.

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Moritz Schumann

Christian Burghart