27 June 2017

Aspects of obtaining the legal protection for a trademark

Obtaining the legal protection for a trademark in the USA has a number of differences compared to a similar procedure in the Russian Federation, which should be taken into account by the entrepreneurs who want to enter this attractive market. We have asked the patent attorney Irina Potapkina, an expert of company Zuykov and Partners, to tell us about what these peculiarities are.

Perhaps the most important and significant difference between the procedure for obtaining the legal protection for a trademark in the USA and the similar actions in the Russian Federation is the fact that in the United States the applicant does not have a possibility to obtain the legal protection for a trademark and to “lay it on a shelf” until better days. In the USA, the registration of a trademark is rigidly linked to its use, which either must have been already realized (the Declaration of Use is included in the package of the documents required for the registration) or will begin in the very nearest future (in such case the applicant shall enclose the Declaration of Intent). In the latter case, the certificate for a trademark can not be issued to the applicant until he confirms the commencement of the use of the trademark with the submission of the Declaration of Use, as well as the documents confirming such use with respect to each of the applied products or services. Thus, the applicant can commence the procedure of the registration without using the trademark; however, he can not complete it until he confirms the commencement of such use.

The United States Patent and Trademark Office, or the USPTO, deals with the registration of trademarks in the USA. This Office considers the applications received from citizens and legal entities of the United States, as well as from non-residents of the USA. The legislation prohibits the registration of trademarks containing the elements that are contrary to the public interests, the state symbols of the USA and other countries, the descriptive marks, the marks that can confuse the consumers, as well as the marks that contain the names and portraits of people, if they have not given their written consent.

After filing the application to the USPTO, the examination shall be conducted for it, during which the compliance of the application with the requirements of the legislation shall be established. In case of a negative verdict, the applicant, within 6 months, shall have the right to send to the USPTO a substantive response to the preliminary refusal to grant the legal protection. In case of a positive outcome, the application for a trademark is published in the official bulletin (updated weekly). After that, within 30 days, any person, in case, if he considers that the registered trademark may violate his legal rights and interests, shall have the right to file a pushback with respect to the indicated application. Subject to filing a corresponding petition to the USPTO, the pushback's 30-day period may be extended.

 In case, if there are no objections received from third parties regarding the registration of the trademark, the USPTO issues a document similar to the Russian decision on the registration of a trademark. If the initial package of the documents has included only the Declaration of Intent, then upon the receipt of such document, the applicant must submit the Declaration of Use of the trademark enclosing the documents confirming the use, or extend the deadline for filing such Declaration.

Some important remarks on the topic.

The Declaration of Use of a trademark, as well as the Declaration of Intent of its use, should be applicable to all products indicated in the application. Thus, it seems inappropriate to indicate the positions for which the registered trademark will not be used in the future. In addition, when filing an application for the registration of a trademark in the USA, it is not allowed to indicate in the list of products too broad, “general” concepts, for example: “clothes,” “shoes.”  To obtain the legal protection in the USA, the products and/or services should be as specific as possible.

It should be remembered that the Declaration of Use must be systematically confirmed: the first time – between the fifth and the sixth year from the date of the issue of the certificate for the registration of a trademark, the second time – between the ninth and the tenth year from the date of the issue of the certificate for the registration of a trademark and further – once every ten years. At the same time, there is no a criterion of massiveness in the Declaration of Use. That is, from the point of view of the American law, there is no a fundamental difference between a single-piece, small-scale production or sales and a multibillion-dollar trade turnover.

Another difference in obtaining and realizing the legal protection for a trademark in the USA from, for example, the similar actions in the Russian Federation, is that in the United States, the legal protection for a trademark is granted for 10 years from the date of the issue of the certificate, and not from the priority date over the application (as in the Russian Federation).

It should be noted that in case of granting the legal protection not according to the national, but according to the international procedure, the necessity to submit the Declaration of Use when filing an application ceases to exist, sending the Declaration of Intent to the USPTO (which is an additional advantage of filing an application according to the international procedure) will be enough. However, the Declaration of Use will need to be submitted at the expiration of a five-year period from the date of granting the legal protection for the trademark.

The original article was published in newspaper “Delovaya Tribuna,” January 24, 2017.

Trademark Attorney