As we all know that a Trademark just like any other Intellectual Property is limited to the Territory it is registered. It is always recommended to get a trademark registered in the country a business owner is willing to export his goods or willing to conduct his business. It’s a general doubt of Trademark applicants or other Intellectual Property applicant’s such as Copyright, Design or Patent, that they have right against the whole word but that is not true. The fact is right of a Trademark Owner ends with the borders of the territory that are protected.
Let’s understand this with an example: Alonika Innovation Pvt. Ltd. have a registered trademark in India with the name of Alonika, companies rights over the Trademark will be limited to the territory of India only. If the company is exporting any product or service in USA it does not have any right over this trademark in USA, thus if any other organization have the same Trademark in USA for the same product or service could restrict the company to export his product or services to USA.
Importance of filing trademark internationally could be understand with the help of following case
“Fuzzy” is a female clothing brand that was developed by a small Brazilian company created in the 1980s. By early 2000, the Fuzzy brand had grown significantly. Its products were exported to several countries in Latin America, where the Fuzzy company properly protected its trademarks under the hybrid trademarks, “FuzzY”, “FuzzYoung” and “CrazY”.
In 2007, this Brazilian company decided to export to Europe and launched its operations in Portugal and Spain. It filed trademark registration applications and started selling its products through a local distributor. However, much to its dismay, a Spanish company called World Fashion requested that it stop selling these branded products, claiming to have owned the three Fuzzy trademarks since 2006 in Portugal and Spain.
What could go wrong exporters don’t have a Trademark registered in the U.S.A or Internationally?
Almost in every country there are certain rules and laws to protect the Intellectual Property being a Trademark, Copyright or Patent registered in the territory. These provisions are governed by the Custom Laws of such country. The basic concept behind this is to protect the products or goods registered in the country from unauthorized entry and piracy. Thus a Registered owner of a Trademark or Copyright or Patent with the Custom department can lead to detain, seize, forfeit and destroy the pirated products imported by any unauthorized representative; this could lead the exporters in a vital situation as their exported products or merchandise could be destroyed by the custom authorities and ultimately leads to huge financial losses.
In the United States, U.S Custom & Border Protection (CBP) has the authority to detain, seize, forfeit, and ultimately destroy those products seeking entry into the United States if it bears an infringing trademark or copyright that has been registered with the United States Patent and Trademark Office (USPTO) or the United States Copyright Office (USCOP), and has subsequently been recorded with CBP.
Similarly in India, INDIAN CUSTOMS IPR RECORDATION (ICeR) help’s the Indian organizations and Trademark owners from pirated product import in India. Section 11 (2) (n) has the power to Prohibit Importation or Exportation of goods for the protection of Patents, Trademarks and Copyrights.
Thus it is highly recommended to have a Trademark filed and registered in the country of export by the exporters prior to their export.
What are the Advantages of Trademark Registration in USA?
- Eliminate the burden of Proof for a registered owner.
- Provides the Legal protection against any Infringement.
- Can use the symbol of ®to the mark.
- Help’s in generating additional revenue by Licensing.
What are the Documents Required for Trademark Registration in USA?
- Application Form
- Basic details of Applicant
- Copy of Id’s and address proof of applicant
- Contact details of applicant
- Power of Attorney
- Copy of Business Registration Certificate
- Copy of Trademark Application filed in India
What is the Trademark Registration Process in USA?
- Our expert professional will conduct a search as per the requirements related to your Trademark Application in USA.
- Our expert will prepare all the required documents and application for Trademark Filing in USA.
- The USPTO will examine the Trademark application and documents and issue the examination report on the application; this could take around 4 to 6 months. But after Covid pandemic in some matters it is taking a bit longer.
- The applicant has to file a response of the examination report within 6 months from issuance of the report.
- If the objections have been resolved by the response filed by the applicant the mark will be accepted and advertised in the weakly published Trademark Journal of USA else the mark will be refused.
- That Advertised trademark can be opposed by any party aggrieved with in a period of 30 days from that advertisement alternatively aggrieved party can file for extension of time to file an opposition.
- If no such opposition is filed, Registration certificate will be issued.
- A filing with perusal of Section 8 of The Trademark Revision Act 1988 is required by The USPTO between 5th and 6th year after issuance of the Registration certificate of Trademark.
What is the Trademark Registration Fee in USA?
In USA Trademark is registrations are of two type State trademark or Federal Trademark. In State trademark the application is filed with the State trademark office, the states will then review the application for conflicting registrations in the state’s database. The process of registering a state trademarks is much quicker than the federal trademark registration process.
A federal trademark is only available for marks used in interstate or international commerce. he current filing fee is range from $275.00 to $375.00 dollars depending on the class of the goods or services. After filing the trademark application, it will be assigned to an examining attorney who will then identify all issues with the application. A federal trademark application process can take from several months to a few years. Though the federal trademark application is more extensive, there are also many more benefits. If a mark is used in trade within the state as well as interstate commerce, it is possible to apply for both a state and federal trademark.
The federal trademark furthers the restriction of any use of confusingly similar marks. The registered trademark will be on a public database. This will prevent other similar marks from being filed and make the use of the trademark will be. The federal trademark also grants the right to use the ® symbol for goods and services while a state trademark are only allowed to use the superscript “TM”. By registering your trademark federally, you are granted the right to sue in federal court in case of infringement.
Under the Lanham Act, a person that obtains a federal trademark has superior rights to use the mark throughout the United States. If a federal registration is obtained before the use of a similar mark in a state, the federal registration has priority over the state registration. If there is any conflict between a federal and state trademark, the Court will most likely rule in favor of the federal registration.
What can be trademarked in USA?
- Name of a Product or Business or Words
- Logo’s or Graphical presentation or Images
- Alphanumeric combination
- A Sound mark
- A Smell mark
- Combined mark or Composite mark
- Colour mark
- Shape of Goods
- Packaging of a Product
Who can file a Trademark application in USA?
- An American Citizen can file for his own Trademark Application
- A Company domiciled in the United State can file his own Trademark Application
- An attorney licensed to practice in USA
- A non-resident of USA can only file a trademark application with the help of Lawyer licensed in USA.
- A company not domiciled in the USA can only file a trademark application with the help of licensed Attorney in USA.
What are the Advantages of hiring an Attorney for Trademark Registration in USA?
- An attorney practicing in USA has in-depth knowledge on Trademark Laws in USA.
- An attorney can conduct a detailed Trademark Search before filing of Trademark application in USA.
- The attorney knows all the required documents and appropriate formats for Trademark Filing in USA.
- An Attorney can keep a track on your Trademark application.
- An Attorney has the knowledge of latest law updates and amendments and judgments pronounced by the Tribunals and Courts.
- Only an attorney licensed in USA can take care of any legal matters related to Trademark in USA such as Attending of Office Hearing or Objection Hearing and Opposition Proceedings, Sending Legal Notices to Infringers of Trademark, and Filing of legal suit in the Courts can only be done by an attorney in USA.
Why choose us for Trademark Registration in USA?
Unlike other platforms in India, Alonika has an association with a dedicated and licensed professional working in the USA and dealing with the Trademark Laws and other IPR laws such as Patents and Copyrights. Being a local practicing attorney in the USA they understand every minute aspect of Trademark Laws in USA and quite able to get the work done efficiently. By working with Alonika you are not hiring an Indian Trademark Attorney to work for you in USA but you are Hiring an Attorney in USA itself having minimum 15+ years of experience in The Trademark Laws in USA , that will ultimately lead to cost saving for someone looking for Trademark Registration in USA. And unlike any other online Trademark portal we will connect you directly with the Trademark attorney in USA to assist your Trademark Journey and help you throughout the trademark registration process.