Introduction

The primary purpose of a trademark is to distinguish the goods and services of one business from those of another. This principle is recognized worldwide.

However, trademarks are territorial rights. They provide protection only within the specific countries or jurisdictions where they are registered. Each jurisdiction is free to regulate trademarks under its own laws.

As a result, while the underlying purpose of trademarks remains the same, the rules, procedures, and requirements can vary significantly depending on where you file. This is especially true for the United States, which follows its own set of rules and requirements.

Have you started using your trademark yet?

This is a crucial question under U.S. trademark law. A key principle in the United States is the first use doctrine, which means trademark rights arise from actual use in interstate commerce, not from registration. This stands in contrast to the first to file approach followed in the Czech Republic and the European Union, where rights generally begin upon successful registration.

To obtain a U.S. trademark registration through the United States Patent and Trademark Office (USPTO), you must eventually prove that your mark is being used in commerce. This requirement shapes the two main filing options available:

• Use in Commerce basis. You are already using the trademark in connection with your goods or services across state lines. You must submit acceptable proof of use, known as a Statement of Use upfront.

• Intent-to-Use basis. You have a bona fide intention to use the trademark in commerce in the near future. Since you are not using your mark yet, you will have to submit a Statement of use later.

How long does the registration process take?

Compared to the European Union, the trademark registration process in the United States is significantly longer and more complex.

In the EU, registration typically takes 4 to 6 months from filing to approval, assuming no objections or oppositions. In the U.S., the process takes at least 12 months, often longer. Again, assuming no objections or oppositions.

Regardless of whether you file under the Use in Commerce or Intent-to-Use basis, the timeline begins the same way:

1. Initial Review Period: 

After filing your application with the USPTO, it currently takes about 6 months before an examining attorney reviews it.

2. Substantive Examination: 

Once reviewed, it usually takes several months for the USPTO to issue a response. Either an approval or an Office Action (a formal objection or request for clarification). This is where the actual registration process starts, and the time needed will be greatly influenced by the applied-for trademark characteristics.

If you are filing under the Use in Commerce basis the USPTO may issue a registration or a refusal, depending on the outcome of the examination. Generally, this will take about 12 months or more, assuming no delays or complications.

For the Intent-to-Use Basis after the same initial 12-month process, the USPTO may issue a Notice of Allowance. Basically, a formal notice that the application has passed. You then have 6 months to begin using the trademark and submit a Statement of Use. If needed, you may request up to five 6-month extensions, giving you up to 3 years from the Notice of Allowance to prove actual use.

What initial fees should you expect when registering a trademark?

The cost of registering a trademark with the USPTO depends primarily on the number of classes of goods or services you are applying for, and the filing basis you choose.

The standard fee for filing a trademark application is $350 per class of goods or services.

In Example:

If your company sells toys for dogs, you will likely file under Class 28, and pay $350. If you also sell leashes, which fall under a different class, Class 18. You would need to file under two classes, resulting in a total fee of $700.

It is Important to note that those prices are for one application, should you apply for standard character trademark (word) and special form format trademark (graphical expression like logo) you would have to file two applications, resulting in $700 or $1400 respectively.

Use in Commerce Basis:

•  You are already using the trademark in interstate commerce.

•  You submit proof of use (specimens) with your initial application.

•  No additional fee is required for a Statement of Use.

Therefore, following the example above, your initial fees would be $350 per class. With two classes (18 and 28), your total fee for USPTO would be $700. Assuming no complications.

Intent-to-Use Basis

•  You are not yet using the trademark but intend to do so.

•  After the USPTO issues a Notice of Allowance, you must file a Statement of Use.

•  Fee for Statement of Use: $150 per class.

•  If you need more time, you may request extensions.

•  Fee for each extension: $125 per class.

• You may file up to five extensions, giving you up to 3 years to submit proof of use.

In this scenario, using the same example with two classes, your fees would be $700 for the filing fee, $300 for the Statement of Use, and $250 for each extension, assuming no complications.

Do you have to be represented by an attorney?

You are required to have a U.S.-licensed attorney represent you before the USPTO for trademark matters if you are foreign-domiciled (meaning your domicile or principal place of business is outside the U.S.).

Therefore, if you are from the Czech Republic or the EU, yes, you must be represented by a U.S.-licensed attorney. If you are based in the United States, you may handle the process yourself.

As a U.S.-licensed attorney with experience before the USPTO, I provide guidance and representation to make the process clear and straightforward. If you are considering filing, I would be glad to assist you.