TRADEMARK APPLICATION FILING IN
United States of America

The United States Patent and Trademark Office (USPTO) is in charge of all Intellectual Property matters and concerns in the territory of the United States. USPTO plays an important role in promoting innovation and economic competitiveness by providing a system for protecting Intellectual Property, thus encouraging investment in research and development. The United States operates on the first-to-use basis when it comes to trademark registrations, and all trademarks must comply with the Lanham Act.

The trademark registration before the United States Patent and Trademark Office (USPTO) can either be filed through the online portal or via offline mode.  

Multiple-class trademark application is allowed by the United States Patent and Trademark Office (USPTO).

The requirements for filing a trademark application are as follows:

• Name, nationality, and address of the applicant;
• Mark representation (logo/device/word, etc.);
• Descriptions of goods and/or services;
• Declaration to use the mark;
• Certified priority document*;

*If priority is being claimed, a Certified Priority Document must be submitted along with a translation in English.

The process of registering a trademark in United States begins with the creation of account & submission of the application. Once the TM application is filed, the application number will be allotted, and the application undergoes a formal examination to ensure it meets all the required standards. Following this, the application is subjected to a substantive examination based on absolute grounds for refusal, where examiners assess the trademark's eligibility for registration. If any issues or discrepancies are identified during the evaluation, the USPTO will notify the applicant and provide three months to reply to the issued office action/examination report. If no issues are found, or once corrections are made, the application moves forward, and the trademark is then published in the Trademark Official Gazette, initiating thirty days opposition period. During this time, third parties have the opportunity to raise objection/opposition to the application. USPTO will issue notice of allowance within eight weeks and the applicant has to submit the statement of use within six months from the notice.

If no opposition is filed within said timeline, or if opposition is resolved in favour of the applicant, the trademark is officially registered, and a registration certificate is issued.

The opposition proceedings begins when an opponent files a notice of opposition to Trial and Appeal Board. The applicant will receive the institution notice, and the board will assess the admissibility. The applicant is required to submit the reply within forty days. Thereafter, the parties will enter into discovery conference regarding the exchange of evidences and written interrogatories etc. The TTAB will then make a decision on whether to accept or reject the application.

A trademark registration in United States is valid for a period of ten years. The trademark must be renewed before the end of six months of the current term to maintain protection for an additional ten years.

However, if the renewal is not submitted on time, it can still be processed within six months after the expiration date with surcharge.

A registered trademark must be actively used within five years of its registration. If the trademark is not used continuously during this period, it may be subject to cancellation following a request from a third party.

Typically, the trademark registration process in the United States takes sixteen months in straightforward cases.

The strong economy of the United States plays a significant role in accelerating the filing of trademark applications. The United States stands at the 2nd highest filings of trademark applications with a number of 848,945 trademark filings. Other strong nations like China, Canada, the UK, etc., also request their trademark applications from the USA. According to WIPO Stats 2023, currently 3,179,914 trademarks are in force in the USA. Also, the USA ranks at the 1st position in Madrid International Trademark applications. Recently in the Global Innovation Index 2023, the USA was declared one of the innovation leaders, ranking in the top 25 economies & backing 3rd position amongst 133 economies in the Global Innovation Index 2024.