United States Trademark Registration

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1. Is registration of a trademark mandatory?

   Register is not mandatory, but it is advisable. Otherwise the legal benefits of registration may not be available. In the absence of registration is not possible to avoid third parties from using the mark, unless is a well known mark.

2. Which Intellectual Property rights are registrable?

   The following rights are registrable: Patents, that can be understood as “right to the inventor of any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement”; Trademarks or “a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others”, and copyrights, which can be defined as “a form of protection provided to the authors of original works including literary, dramatic, musical, artistic, and certain other intellectual works”.

3. Can a trademark be registered for covering a commercial establishment which activity is focused in selling goods to consumers, for example retail stores? If so, how is the registration procedure? Are there any special requirements for it?

   The figure of the commercial establishment does not exist in the US trademark system. The most similar concept would be the service mark which “identifies and distinguishes the source of a service rather than a product”. Therefore, our advice is to proceed with a service mark which grants the same protection as a trade name.

4. Is there any advantage in using a trademark before filing an application?

   Only regarding well known trade marks, since in that case is possible to oppose or seek the cancellation of newer marks, and will allow taking measures in case of infringement. However, always is suggestible to register a trademark if you want to protect your right regarding the specific brand.

5. How long does the registration process take?

   The process can take from almost one year to several years, depending if legal issues arises during the examination of the application.

6. Is there any requirement of use for registered trademarks? If so, what happens in case it is not used?

   It will depend if we are talking of a first application, or if it refers to a renewal application. In the case of a first application, a Declaration of continued use (or excusable non-use), must be filed between the 5th and 6th years after the registration date. In the case of renewal application, a Declaration of continued use (or excusable non-use) and an application for renewal must be filed between the 9th and 10th years after the grant date of the trademark in its first ten year period. If this is not accomplished, the trademark could be object of a cancellation action based in the non-use of it.

7. In the case of a registered mixed trademark (word + logo), is it possible to include in the logo, different or additional words from those mentioned in the word mark?

   In the US, the logo mark is filed independently from the word mark. Therefore, in order to get a full protection, the logo mark must contain the same words than those contained in the word mark.

8. How can I know which is the due date for the renewal of a registered trademark?

   You should calculate 10 years from the registration date, as this is the time that lasts a registration.

9. When should I pay the renewal fee of my registered trademark?

   A renewal can be filed between the 9th and 10th year.(Always examine and be sure to file the renewal application before the registration expires).

10. Is it possible to pay the renewal fee of a patent after the renewal due date has expired? If so, when should I pay?

    It is possible to renew for six months from the renewal date with payment of a surcharge.

11. What documents are required for filing a trademark or renewal application?

    No special documentation is required for renewing a trade mark, except for the completion of the official forms.

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