How Non-U.S. Entities Can Properly Trademark a Name in the U.S.

Trademarks are very important if you want to do ethical and legal business in the U.S. Your product or service can be blocked from the American market if trademark disputes arise between your brand and a registered U.S. trademark.

This article covers how to determine if registration is possible for your brand, and how to get started.

Essential Steps for Non-US Entities

Registering a trademark in the U.S. as a non-U.S. citizen or a foreign corporation is very similar to the process that U.S. citizens or businesses follow. Here’s a step-by-step guide:

1. Determine Eligibility: use the free Trademark Application Qualification System (TAQS) or consult a U.S. attorney.
2. Search for Similar Trademarks: After determining eligibility, it’s advisable to search the USPTO’s online database (see below).
3. Appoint a U.S. Attorney: As of August 3, 2019, foreign-domiciled applicants and registrants must appoint a U.S.-licensed attorney to represent them in the U.S. Patent and Trademark Office (USPTO). This means that non-U.S. applicants will need to hire a U.S.-based lawyer to handle their trademark applications.
4. Prepare and Submit Application: Using the USPTO’s online system, the U.S. attorney can submit a trademark application on your behalf. Additional steps may depend on your specific situation.

Trademark qualification score

A good first step to protecting your brand name is to assess your eligibility before using any registration service. The free Trademark Application Qualification System (TAQS) is a fast way to gain clarity on your approval likelihood, cost and timelines, and application suggestions. After answering several multiple-choice questions, a score and report are generated for you.

A score above 80% suggests your prospects are generally good for securing and maintaining a strong U.S. registered trademark, and the trademark is suitable for your business goals.

While this is a free non-legal assessment, checking your trademark score in advance of application may mitigate rejection risk. Your report can indicate application weaknesses and provide improvement suggestions to strengthen your filing with a qualified attorney.

Risks of trademark rejection

Over 60 percent of US trademark applications are rejected, so the risk is worth considering. A major cause of rejection is when a brand (or the specific usage of a brand) was not eligible for trademark protection to begin with. Rejection can happen for several other reasons, and you would typically lose your application and attorney fees.

A rushed application can also result in a weak trademark filing. This raises the possibility of a formal objection by another party holding a similar brand mark. The objection can block your application, or create an expensive legal conflict years later.

The best ways to apply for a U.S. trademark

If you’re willing to learn the process and accept the risks, then self-filing (if you are a U.S. citizen) is an option. Please be aware there is a significant chance of making a technical or strategic application error on your initial or supplementary filings if you are not experienced.

You may also consider online filing services, which are inexpensive ($400 to $1000 plus government fees), but may not conduct eligibility checks, and typically charge extra fees if additional actions are required.

If your trademark is important to you then a sensible approach is first conducting a quick pre-qualification assessment, and then having a trademark attorney manage your filing, or seeking the help of an experienced paralegal. An attorney can reply to requests by the USPTO examiners (called “office actions”), and guide you through any objections or complications that may arise.

Reduced cost filing option

Entrepreneurs and small business owners often prefer a lower-cost filing option and are willing to be somewhat more “hands-on” with their application.

It’s possible for US citizens to self-file for a US trademark with the help of an experienced trademark paralegal, rather than hiring an attorney to manage the process. This provides a detailed trademark search performed by an expert, which is essential for deciding whether to proceed with filing and if any adjustments may be necessary to avoid rejection.

Keep in mind that any filing method has a minimum cost of $250 due to government filing fees, and that government fees could be in the $1000 range for broad-ranging marks spanning multiple classes.

DirectFile is one reduced-cost (assisted self-filing) program that also provides a refund guarantee. Low-cost registration services have proliferated in the past decade, so check what they include carefully. The cheapest options typically do not including expert search, consultation, or filing support.

How long does TM application take?

The initial examination wait time (“first action”) is currently around 8.5 months, and the entire process takes about 14.6 months if there are no significant complications (source: USPTO). Approval delays are more common when applicants have not adequately prepared documentation of their brand usage and related documentation.

Trademark registration considerations

More generally, entrepreneurs and businesses should consider these points when deciding to pursue a trademark registration:

1. Brand recognition: Is this important to you going forward? If your business has (or plans to) established a brand that is unique and recognizable in the marketplace, it may be worth protecting with a trademark registration.
2. Likelihood of confusion: Would confusion cause a problem? If there are other businesses or products with similar names or logos that could cause confusion among consumers, a trademark registration can help prevent this confusion and protect your brand identity.
3. Market expansion: Are you planning for significant growth? If your business plans to expand its product or service offerings beyond its current geographic or industry boundaries, a trademark registration can help establish and protect your brand identity as you enter new markets.
4. Potential legal disputes: Is your market or competition litigious? If your business is already facing or anticipates potential legal disputes related to trademark infringement or intellectual property rights, a trademark registration can provide additional legal protection and evidence of ownership.
5. Budget & cost: Is your cashflow healthy? Registering a trademark involves several hundred dollars in filing fees (depending on the number of classes you apply for) and potentially several thousand dollars in legal fees (depending on the complexity of the application and the attorney’s experience and expertise). The above-mentioned trademark report can help you determine this.

Here is a general overview of the general U.S. trademark registration process:

1. Feasibility analysis: Determine if applying for a trademark is worthwhile given your brand, situation, and goals. The free TMPR report is one simple tool to help establish this.
2. Trademark search: Before applying for a trademark, it’s important for you or an attorney to conduct a very comprehensive search to ensure that the desired name or logo is not already in use or too similar to an existing trademark. This can be done using the USPTO’s TESS search system and should be checked by a trademark attorney.
3. Determine format: Words and phrases are the most common format (standard characters, text only), but other options include wordmarks (stylized designs with graphics or fonts), logos and graphic designs, shapes and colors, sounds and jingles, and even scents (such as perfumes).
4. Determine class(es): Trademarks are classified by the type of goods or services they represent. You will need to determine which class or classes of goods or services your trademark will cover.
5. Prepare USPTO application: The application should include a description of your trademark, the class(es) of goods or services it covers, and any supporting documentation or specimens. Specimens are used to demonstrate how the trademark is being used in commerce and to help the USPTO determine whether the trademark meets the legal requirements for registration.
6. Wait for examination: After filing your trademark application, the USPTO will conduct an examination process to ensure that the trademark meets all legal requirements. This process can take several months to a year or more.
7. Respond to any USPTO inquiries or objections: If the USPTO raises any objections or requests additional information during the examination process, you will need to respond in a timely manner to address these issues. An experienced trademark attorney may be very helpful at this stage.
8. Receive registration: If your trademark application is approved by the USPTO, you will receive a trademark registration certificate. This certificate gives you legal protection for your trademark and allows you to use the registered trademark symbol ®.
9. Maintain your trademark registration: To keep your trademark registration in force, you or your trademark attorney will need to file periodic maintenance documents and pay renewal fees to the USPTO.

Trademark vs. Copyright

There’s frequent confusion between trademarking and copyrighting, leading some people to ask how to copyright a name. Only a registered trademark can protect a business name, while copyrighting a name protects the original creative expression contained within a work of authorship, such as a book or movie. Likewise, you cannot “patent a name,” as patents protect ideas rather than brands.

Common law trademarks

Common law trademark protection in the U.S. is a form of unregistered trademark protection that arises from the use of a particular mark in commerce. Under common law, a business can establish trademark rights in a mark simply by actively using it in connection with the sale of goods or services. However, common law trademark protection is limited to the geographic area in which the mark is used, and it may be more difficult to enforce these rights in court without a federal trademark registration.

Use of trademark symbol (TM)

In the U.S., the trademark symbol (like this™) can be used by any individual or business that is using a particular word, phrase, symbol, or design as a common law trademark or service mark, regardless of whether the mark is registered with the United States Patent and Trademark Office (USPTO).

Using the TM symbol notifies the public that the mark is being used as a trademark or service mark, and that the owner of the mark claims rights in the mark. The TM symbol does not require any formal registration or approval from the USPTO, however you should do thorough research before applying the TM to ensure you are not infringing on anyone else’s trademark rights.

Use of Registered Trademark symbol (R)

In the U.S., the registered trademark symbol (like this®) can be used only by the owner of a trademark that has been registered with the United States Patent and Trademark Office (USPTO). It is illegal to use the ® symbol for a trademark that has not been properly registered with the USPTO.

Using the ® symbol provides notice to others that the mark is a registered trademark, which can provide significant legal benefits, including the ability to enforce the mark in federal court and to recover statutory damages and attorney’s fees for infringement. It deters potential infringers and enhances the perceived value and credibility of the mark. Registered trademark owners can also block the import of counterfeit foreign goods by working with the U.S. Customs and Border Protection (CBP) agency.

While the process of registering a trademark can be complex and time-consuming, it’s an important step in protecting your brand identity and preventing others from using similar marks that could create confusion among consumers. Working with a trademark attorney can simplify the process and help ensure that your trademark registration is handled correctly and efficiently.

If you’re serious about branding, it’s a good idea to search for existing registered trademarks before investing too heavily in your own.

The USPTO TESS (Trademark Electronic Search System) is a free tool that allows you to search for existing trademarks in the U.S. government’s USPTO database.

Despite a clunky interface, TESSS is recommended because of its powerful search options and because it is the most up-to-date source available.

It’s important to note that while the USPTO TESS search can be a useful tool for conducting preliminary trademark research, it’s not a substitute for a comprehensive trademark search conducted by a trademark attorney. A trademark attorney can provide a more thorough and accurate analysis of potential trademark conflicts and legal issues.

Trademarking a logo involves protecting the specific design or symbol associated with a product or service. This means that others cannot use a similar design or symbol to sell similar products or services. For example, the Nike “swoosh” design is a registered trademark for athletic shoes and apparel.

While both types of trademarks serve to protect a business’s brand identity, they have different strengths and limitations. Trademarking a word is typically easier and less expensive than trademarking a logo, but it can be more difficult to prevent others from using similar words or phrases. Trademarking a logo, on the other hand, can provide stronger protection against copycats but may require a more complex and costly application process.

It can be a good idea to trademark a name and logo at the same time with the same attorney, as it can help ensure consistency and efficiency in the trademark registration process. It’s important for the name and logo application to be consistent with each other and align with the overall branding strategy of the business. An experienced trademark attorney can help ensure that the name and logo are properly protected, and can also advise how to use and maintain the trademark going forward.