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Overview of the American trademark system

Picture of 弁理士 杉浦健文

1. Flow of trademark registration (from application to registration)

  1. Application: Decide on the business design, name, products and services to be used, etc., and file an application with the United States Patent and Trademark Office (USPTO). When filing an application, it is necessary to clearly state the "basis of the application," such as whether the trademark is actually being used or whether there is an intention to use it in the future (details are provided later).

  2. Examination: After filing, a USPTO examiner will conduct a formal and substantive examination. Here, it is checked whether the(a) trademark has distinctiveness (the ability to distinguish it from the goods and services of others) (for example, whether the trademark is a general name itself or a mere description of the product), and(b) whether a similar trademark has already been registered (there is no conflict with a similar prior trademark). The results of the examination are generally available within a few months after the application is filed. If a problem is pointed out during the examination, the applicant has the opportunity to respond (amend or argue) within 6 months from the notification.

  3. Publication and Opposition: Upon successful examination, your trademark will be published in the USPTO Register. If someone else opposes the trademark registration, they can file an opposition within 30 days from the date of publication. The procedure for filing an opposition is carried out in a format similar to a court case, and in many cases the matter is resolved through settlement negotiations between the parties. If no objections are raised and the period has passed, you will proceed to the registration procedure.

  4. Registration: If no objections are raised in the official gazette (or if the objections are resolved), the trademark is officiallyregistered. A trademark registration certificate will be issued by the USPTO, and the registered trademark can display the registration mark "®" (only federally registered trademarks can use the ® mark). However,if the application was based on "Intent to Use", a registration certificate will not be issued immediately. In this case, the USPTO will first issue a Notice of Allowance for registration, and registration will only be officially approved after submitting documents proving actual use of the trademark (declaration of use and evidence of use) within 6 months after the notice (up to 5 extensions can be applied). Please note that registration will not be completed unless proof of use is submitted by the submission deadline.

2. Characteristics of usage principle/prior user rights

  • What is the usage principle? The most distinctive feature of the American trademark system is the "usage principle," in which trademark rights are generated by actual use. This differs from Japan's first-to-file system (registration system), which gives priority to those who apply first, and the idea is that rights are granted to the person who uses the trademark first. In other words, even if you have notregistered a trademark, if you have previously used the trademark inbusiness, you will have certain rights (prior user rights) in the territory where you use it. In the United States, this is also called common law trademark rights; for example, even if a trademark has not yet been registered, it can be protected in that region if it has gained popularity through continued use.

  • Advantages of prior use rights and federal registration: Even if unregistered, rights arise from prior use, but the scope of these rights is limited to the area or product field where the product is actually used. As your business grows, you may want to expand to other regions. In that case, you will need to obtainfederal trademark registration to claim national exclusivity. Federal registration provides legal benefits, such as being deemed to have used the trademark throughout the United States after the filing date, making it more advantageous to assert rights against third parties than if it were not registered. For example, federal registration has the advantages of (1) being able to assert the right to use a registered trademark throughout the United States and checking unauthorized use by third parties, (2) being able to request an injunction against the import of counterfeit products through customs registration, (3) demonstrating brand value by attaching the ® mark, and (4) obtaining incontestability (a status in which the validity of the right cannot be challenged by a third party afterward) after five years of continuous use. In short, it can be said that in the United States, we are not satisfied with just using the property first, but it is of great significance to register it in order to stabilize rights on a nationwide scale.

3. Registration requirements (identification, proof of use, etc.)

  • Distinctiveness and reasons for refusal: To register a trademark in the United States, it is required that the trademark can be clearly distinguished from the goods and services provided by others (distinctiveness). For example, a general product name itself (common name) or a word that directly expresses the nature of the product (descriptive mark) lacks distinctiveness and cannot be registered. In addition, trademarks that fall under the grounds for non-registration stipulated by law, such as marks that violate public order and morals or include the name of another person's famous person without permission, cannot be registered.Furthermore, even if a similar trademark has been previously registered, in principle, registration will not be permitted to avoid confusion of origin. The USPTO examiner will examine these absolute and relative reasons for refusal, and if there are any problems, a notice of refusal will be issued.

  • Proof of Use (Affidavit of Use and Evidence of Use): An important condition for registration of a U.S. trademark is actual use in commerce. If you are already using the device in the United States at the time of application, you must declare the start date of use and submit evidence of use such as a photo to prove use. On the other hand, if you have not used the trademark yet, you can apply by declaring your "faith intention to use it," but even in this case, you must start using the trademark after passing the examination and before registration. Specifically, as mentioned above, formal registration will only occur once proof of use has been submitted after registration permission has been granted. There is also the route of filing an application in the United States based on a registration in a foreign country (such as Japan), but even in this case, you will still need to submit evidence that you are using the trademark 5th to 6th year after registrationand at the time of renewal. As mentioned above, in the United States, ``Unused trademarks are not maintained as rights.'' This is a unique feature of the usage principle.

4. Competent agency (USPTO, etc.)

  • Federal level jurisdiction: In the United States, the United States Patent and Trademark Office (USPTO) has jurisdiction over trademark registration. The USPTO is a government agency under the Department of Commerce that is responsible for granting patents and trademarks. To federally register a trademark in the United States, you must file an application with the USPTO and go through the examination and registration procedures at that office.

  • State-level jurisdiction: In addition to federal registration, the United States also hasa trademark registration system for each state. When registering in a state, a trademark application is filed with the state government (usually the Secretary of State's office), and the trademark is examined and registered under state law. However, the rights obtained through state registration are valid only within that state and do not have nationwide effect (detailed differences between state and federal registration will be discussed later). Generally, federal registration is used when doing business nationwide, while state registration is for regionally specific businesses.

5. Obligation to update and maintain after registration

  • Term and Renewal: U.S. federal trademark rights are valid for 10 years from the date of registration. If you go through the renewal procedure every 10 years, you can extend (renew) your rights as many times as you want as long as you continue to pay the fee. Therefore, in theory, trademark rights can last semi-permanently.

  • 5th-6th Year Declaration of Use: To maintain your rights, you must file a Declaration of Use with the USPTO during the 5th-6th year of registration (from the 5th year to the 6th year from the date of registration). This is an oath that ``I am using the trademark properly even after registration,'' and I am also required to submit proof of use (e.g., a photo of a product bearing the trademark or an advertising image) showing that I am currently using the trademark. If you fail to do this, the USPTO may revoke (cancel) your trademark registration. In other words, trademarks that have been registered but left unattended are sorted out here.

  • Obligations at the time of renewal every 10 years: In addition to the above-mentioned interim maintenance, when applying for renewal every 10 years, it is also required to submit an oath and evidence of use to prove the use of the trademark. Even at the time of renewal, if the trademark is not actually used for the specified product or service, the registration for that product or service cannot be maintained. In this way, in the United States, continuing to use a trademark is a prerequisite for maintaining rights, and unused rights cannot be renewed and are deleted.

6. Non-use cancellation/invalidation trial system

  • Revocation for non-use (obligation to use): In the United States, rights may be revoked if a trademark is not used for a certain period of time. Specifically, if a trademark is not used for three consecutive years, it is legally presumed to have been ``abandoned'' with no intent to use it in commerce. A third party can file a Petition for No-Use Cancellation with the USPTO's Trademark Trial and Appeal Board, and a registration can be canceled if there is no legitimate use. ``Use'' of a trademark usually requires serious commercial use, and token use solely for the purpose of maintaining rights is not permitted. This strict enforcement prevents trademarks that are not used in the market from being preserved as exclusive rights.

  • Invalidation trial (cancellation of registration): Even if a trademark is registered, there is a system to request invalidation (cancellation) if there is a problem at the time of registration. For example, in cases such as ``a descriptive trademark that originally lacked distinctiveness was registered by mistake'' or ``it should not have been registered because it closely resembles another company's trademark,'' an interested party can file a petition for invalidation (equivalent to an invalidation trial in Japan). In the United States, these disputes are primarily handled by theTrademark Trial and Appeal Board within the USPTO or in federal court, and as a result of the hearing, the registration may be cancelled. In addition, applications made in bad faith or registrations based on fraudulent proof of use will be subject to invalidation or cancellation if discovered. There is also a system in place for trademarks that have been registered for more than five years to become legally incontrovertible, making it impossible to claim invalidity, except for certain reasons such as descriptiveness (to protect trademarks that have been used without problems for a long period of time and have become established in the market).

7. Difference between state registration and federal registration

  • Federal Registration: A trademark registration system based on United States federal law (commonly known as the Lanham Act). Trademarks used in interstate commerce (transactions between states) and international transactions are subject to registration, and registered trademark rights extend throughoutthe United States. Applications and examinations are conducted at the USPTO, and registered trademarks can be marked with a ® mark to indicate that they are registered trademarks. Companies that operate nationally typically use this federal registration.

  • State Registration: A trademark registration system based on the laws of each state in the United States. This applies to trademarks used in intrastate commerce, and the validity of the trademark rights is also limited within the state. For example, if your business is only conducted in one state, federal registration is not available and you will need to use state registration to protect your trademark. However, in modern times, distribution has become widespread and there are few cases where it is completed within a state, so in practice, state registration is only used in a limited number of situations. Note that the ® mark cannot be used for state registration, and only the ™ mark can be used in the same way as unregistered trademarks (® can only be used for federally registered trademarks).

  • Other differences: Procedurally, federal registration is more time-consuming and expensive to review, while state registration is relatively quick and inexpensive, but provides fewer rights. In addition, infringement suits against federally registered trademarks can be brought in federal court, but in the case of only state registrations, the remedies are basically based on state law. However, as mentioned above, federal registration has broader benefits, so companies aiming to expand across the United States usually aim to obtain a federal trademark first.

8. Comparison of systems with other countries (main differences between Japan and the EU)

  • Differences with Japan (first-to-file system/registration system): In Japan's trademark system, rights arise for trademarks only after they are registered. There is no need to actually use the trademark at the time of filing; registration is permitted even if the trademark is not currently in use, as long as there is an intention to use it in the future. This is a system that allows you to ``seize the rights first even though you have no plans to use it yet.'' On the other hand, as mentioned above, the United States places emphasis on use, and as a general rule, trademarks that are not used cannot be registered or maintained. In Japan, there is a system in which trademarks can be canceled if they are unused for three years after registration, but proof of use is not required at the time of registration, and there is no need for an oath of use like in the United States when renewing. In short, the big difference is that in Japan you can acquire rights on a ``first come, first served'' basis, whereas in the United States it is ``first come, first served'', and the rights cannot be established unless you use it.

  • Differences with the European Union (EU): Like Japan, the EU has adopted afirst-to-file system (a system that grants rights to those who file the application first). By filing an application with the European Union Intellectual Property Office (EUIPO) and receiving registration, you will receive trademark rights that are valid throughout the EU as a single "EU trademark." There is no need to prove the status of use of a trademark when applying or renewing it, and it will not be canceled due to non-use until five years have passed since registration (if it is unused for more than five years, a third party can request for the rights to be revoked)*. Therefore, the EU is basically a registration system, and unlike the US, there is no requirement to use the product before registration. However, once an EU trademark is registered, it is protected in all member countries, but if there is a reason for refusal (for example, the existence of a similar trademark) in any one country, the registration will be refused throughout the EU. In general, it can be said that the US places great emphasis on ``the presence or absence of use,'' while Japan and the EU have systems that place emphasis on ``quickness of application.''

Reference: The above is a general overview, and there are detailed exceptions and procedures that differ from country to country. When actually applying for a trademark, we recommend checking with an expert about the latest systems and requirements in each country.

 

 

Takefumi SUGIURA, Patent Attorney

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).