Information for International Trademark Counsel

One of the most pleasurable aspects of our business is working with our colleagues from around the world to assist them in gaining protection for their clients’ trademarks in the United States. While the Madrid Protocol has made the world a considerable smaller place for trademark owners and their counsel, not every country’s laws operate in the same way, and our colleagues from outside the United States sometimes find the process here different from their local practices, and occasionally a bit frustrating. This is an overview of some of the most common differences you may encounter when seeking protection in the U.S.

Use

Trademark rights here in the United States grow from use in the mark in commerce. Registration here is secondary. (That is not to suggest registration is not important!) The trademark laws here recognize protection for marks that are not in use only to a limited extent and for a limited period of time.* One of the ways in which our foreign colleagues’ experience difficulty is that in much of the rest of the world, it is perfectly acceptable to claim protection on all of the goods in a particular class, or to simply list a class heading. There has been case law in the U.S. in recent years, however that states that listing goods in an application with which the applicant has not bona fide intention to actually use the mark may constitute fraud on the United States Patent & Trademark Office (USPTO), and may subject a mark to cancellation. We counsel our colleagues to advise their clients to choose their goods and services for a U.S. application in line with their actual intent to use the mark in the United States.

Applications for which priority is claimed based on a foreign application or registration, or which come under a Madrid Protocol extension, are exempted from having to prove use prior to registration; however, use must be proven after five years from the date of registration in order to maintain protection.

Specifications

Even with careful selection of goods and services, the USPTO may not always accept our identification in the first instance. The USPTO does not recognize the Nice Classifications, but the specificity with which goods and services need to be described in a U.S. application has evolved somewhat away from what much of the rest of the world will accept. The descriptions of services that were accepted for registration in a client’s home country may still require revision in the U.S. A specification for “sports gloves” in Class 25 will result in a refusal to register for lack of specificity, although “gloves” by itself is a perfectly acceptable identification. We often go through several rounds of revisions of goods and services identification before the USPTO will allow the application to pass to publication — be prepared to be patient!

Renewals

Renewals of U.S. trademark registrations come between years 5 and 6 from the date of registration (when affidavits are submitted to show that the mark has been in continuous use and has become “incontestable”), between years 9 and 10 (for renewal), and then every 10 years thereafter. However, this renewal scheme is in addition to, and not an alternative to, renewal of an international registration under the Madrid Protocol. International Registrations must be renewed every 10 years from the date of the registration as well.

Contact us with any other questions about protecting your clients’ trademarks in the United States. Aaron | Sanders PLLC is happy to help!