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Challenges of Trademark Registration in the USA - What to Prepare For

Challenges of Trademark Registration in the USA - What to Prepare For

The majority of clients who approach us for assistance in filing a trademark application are, of course, most interested in protection of their trademark in the Czech Republic, Slovakia or the European Union. Another popular trademark "destination" is the USA. However, be prepared that this is a very different and somewhat challenging procedure. So, what can you expect and how does this procedure differ from the Czech or European one? 

Above all, expect the procedure to take much longer. It takes at least half a year, usually 9-12 months, before the US Patent Office ("USPTO") even starts to process your application. If everything goes smoothly, by this time you have already registered the Czech or EU trademark.             

Trademark registration procedure in the USA is rarely smooth, so you should expect to have to communicate with a USPTO official once or more times, and only through a local representative, whether it is just to clarify the list of products, explain the meaning of words in the application, or comply with other requests from the USPTO. But one thing is for sure... it certainly won't be cheap

The fundamental difference between the current practice in the Czech Republic and the EU compared to the USA is that the USPTO opposes earlier identical and similar trademarks ex officio. Therefore, if the official concludes that there is an earlier similar trademark that prevents registration of your trademark, you will have to convince him through your local representative that the trademarks are not similar or that the similarity does not compromise registration. 

Provided that you manage to convince the official that your application is fine, it will be published. If no one opposes, you are finally close to registration, but that's not all. After the expiration of the opposition period, the USPTO issues a document called a "Notice of Allowance", which confirms the successful completion of the examination procedure. Here comes another fundamental difference from the procedure in the Czech Republic or the EU, which is to prove the use of your trademark before its registration. 

When filing an application in the USA, you must have an "intent to use", you must intend to actually use the trademark. You can prove your intent by submitting a declaration of intent when filing your application. In addition, the USPTO will ask you to provide proof that the trademark is already in use in the USA (you can usually submit a photograph of the product).  If you are not yet using the trademark at that time and cannot produce such proof, the trademark cannot be registered. The time limit for submitting proof of use can be repeatedly extended by 6 months (up to a maximum of 5 times and, of course, for a fee). 

You can get around the above by so-called "leaning" your US application on an earlier registration of an identical trademark from another country or the EU, thus avoiding the need to prove actual use in the USA necessary for successful registration.   

For all these reasons, the US procedure is much longer and also much more expensive than clients are used to with Czech or European trademarks.  It is important to realise at the outset that this does not end by the application filing costs. 

Are you considering protecting your trademark in the USA? Do not hesitate to contact us, we have extensive experience with trademark registration in Europe and the USA and can therefore recommend you the most appropriate and cost-effective solution for your business.

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