Trademark Registration in the USA

It is common practice when competitors (especially on the marketplace) see active growth in sales and register your brand name for themselves. In this case, if you miss the opposition period, during which you can appeal against the misappropriation of the TM, it will be complicated and costly to cancel the registered trademark.

Also, we are often approached with the problem that the factory, where the client produces the goods, independently submits to register TM and then requires additional payment for the goods (royalties).

Blockages on marketplaces on fictitious applications of competitors mean competitors in unfair competition make fictitious complaints about your product/account. You can refute the complaint only if you have a registered trademark or a trademark in the registration process.

If this is not the case, you lose the ability to withdraw funds, and you lose potential sales every day of a blocked account.

The presence of an identical, similar trademark when there was no preliminary search during the creation of the brand (naming) is not a rare case. And after the production of a batch of goods with the applied trademark or shipment of goods to the warehouse, and often after long-term sales, it turns out that the trademark name violates someone’s rights by similarity or identity.

The easy outcome is when you will be allowed to sell the product with a royalty payment; in the worst-case scenario, you will be banned from selling the product and charged monetary compensation.

Terms of registration – there is no statutory provision for expediting trademark registration in the United States. If there are problems with infringement of your rights, or you need proof that you are not infringing anyone’s rights, you will need to wait for the end of the registration. Therefore, it is worth providing for in advance.

Additional features of Amazon Brand Registry, if considered in terms of Amazon Marketplace:
you get additional functionality, which helps distinguish your product from other sellers and increase sales, thereby increasing income.

Example: now you have listings under the brand Romashka. A year after sales, you apply for registration of the TM and find out that the brand for your products is taken. You apply for registration of the trademark Mak, register the Brand Registry, and then try to connect the existing listings to the Brand Registry. Still, nothing works, so you end up contacting support and get the standard answer:

To solve this problem, you will have to do a lot of monotonous work not to lose the information accumulated on the listings for a year of sales.

A trademark search is necessary to evaluate the successful registration of a TM. During the search, we check for identical or similar trademarks in the same class according to the NCL (International Classification of Goods and Services). Depending on the search results, we will offer recommendations for further actions: submitting for registration or a list of changes needed for successful registration.

The search report will give you:

• Information about the registered trademarks and those submitted for registration that exactly match your trademark;

• Information about trademarks similar to yours (graphically, phonetically and in spelling) and their analysis with forecasts of possible risks;

• Trademark refinement amendments (if possible, rather than simply creating another one) and other recommendations to increase the chances of successful registration;

• Classification of your goods according to NCL Classification and determination of the number of classes in which the trademark will be registered;

• Estimated percentage of successful TM registration, according to our experts;

• Detailed calculation of the cost of services and state fees.

Classes are groups of goods/services classified according to specific criteria, such as application or manufacturing material.

There are 45 classes in total, 34 – for goods and 11 for services.

Each class has a strict wording and a list of goods included. For example, all types of sports equipment are in Class 28, including kneepads, but medical kneepads are in Class 10.

After you provide the entire list of goods you are planning to register the trademark for, the lawyer will determine the number of classes your product falls under. From practice, it is 1-3 classes on average.

Also, based on the search results, you can submit only a few or one class of goods in the application for TM registration.

But do not confuse classes and categories on Amazon – goods from the same category do not always belong to one class.

1. Presence of an identical trademark.
2. Presence of a similar trademark:
   • sound the same in conversation;
   • outwardly similar;
   • have the same meaning in translation;
   • create the same overall commercial impression.

It is best if your trademark name is fictitious and does not contain names, surnames, and well-known names.

Trademarks can be registered for both an individual and a legal entity.

In the first case, if you have a company, the trademark will be part of the expense you pay royalties for.

The second option is suitable for those “building” a brand or considering selling the business in the future. Then the trademark for the company will increase the overall value of the business.

Only residents can register a trademark in the United States on their own. If you are a resident of any other country, you need to use the services of a lawyer – such are the requirements of U.S. law.

It is not a secret that some freelancers take on such TM applications by nonresidents and list you as a U.S. resident. In such a case, the patent attorney may ask for a utility bill as proof of your residency in the United States.

Also, you will have to monitor the registration process, as it is you who will receive all notifications from USPTO. In that case, you should prepare answers to the Office action.

In the U.S., unlike in other countries, there is a priority right. So, if you started using a trademark (without registering it) before another representative, you have a priority in submitting it for registration.

In case a competitor wants to file your trademark for registration, you will have 30 days from the date of trademark publication to file an objection to such a trademark since you initiallly started using it.

Unfortunately, this right exists only in the United States. Be careful when a product starts to be actively sold in one country; it is worth checking whether someone is registering your trademark in another country. It is unlikely to dispute such registrations.

A trademark protects intellectual property rights and makes it possible to prohibit the sale of identical goods or copies.

It happens through litigation. You can file a complaint about violating your rights in the marketplaces, and shortly, it will be accepted.

Trademarks, like patents, have local force and protection; thus, they are legal only in the country where registration is obtained.

Therefore, to get trademark protection in the country you do business under that brand name, you should register it there.

You have an opportunity to register a TM in several ways:

• Directly file an application with the Patent Office of the country where you want to get protection.

• Use the Madrid system (according to the Madrid Agreement, you can apply to 123 countries at the same time, without paying state fees separately in each).

Apply for trademark registration in black and white – this secures your right to use the TM on the goods in different colors.

If you file the trademark in red, you will not be allowed to use it in black.

We recommend using the standard Times New Roman font. It will allow you to change the font of your TM in the future, resorting to italics and other designs.

If you change the design font used during registration in several years, you will have to register a new TM.

Verbal trademark is the most common type of TM and has no pitfalls.

Graphic – if we talk about Amazon, you cannot get a Brand Registry for such a trademark.

Combined is a trademark that is both verbal and graphic.

It would seem the best option, but such a trademark can only be used jointly. It is impossible to separate the inscription and additional elements. You have to register graphic and verbal trademark separately to do this.