The trademark application process in the United States is similar to the process in Canada, but there are some notable differences and important considerations to be mindful of to ensure you can successfully and cost-effectively obtain and maintain a U.S. trademark registration. We outline below a few of those important considerations for U.S. trademark applications, including in circumstances where the applicant has a Canadian registration or a co-pending Canadian application.
1. "USE" OF THE TRADEMARK
In the United States, a trademark applicant has to show "use" of their trademark in commerce in the United States at some point prior to registration in order to obtain and maintain the registration. "Use" of a trademark is a technical term, and how you demonstrate "use" appropriately for the USPTO will depend on whether your trademark application includes goods or services.
Goods
To show use of a trademark with goods, the trademark has to be displayed either on the good itself, or on labels, packaging, or tags attached to the goods. If your trademark does not appear exactly as applied for on your goods, labels, packaging, or tags you may not be able to demonstrate sufficient "use" of the trademark to obtain a registration.
An additional consideration when displaying the trademark on goods is to make sure that the trademark is displayed in a way that uses the trademark to identify the source of the goods, rather than as a decorative feature on the goods. For example, if your trademark application covers t-shirts, displaying the trademark across the front of the t-shirt will not be sufficient use of the trademark, because the trademark is being used as decoration on the shirt. Instead, to show use of a trademark with t-shirts, consider, for example, putting the trademark on the label at the back of the shirt, or on a hangtag attached to the shirt when it is made available for sale.
Services
To show use of a trademark with services, the trademark has to be displayed in association with advertising, promoting or offering of the services to the public in the United States. Strong examples of "use" of a trademark for services are advertisements for the services that clearly display the trademark, or websites that display the trademark and list the service that is to be provided.
When determining whether to include certain goods or services in your trademark application it is important to be mindful of how you are using or plan to use your trademark, and whether you will be able to show proper "use" of the trademark to obtain a registration.
For more information about proving "use" of a trademark in the United States, please see the "Specimens" page of the USPTO website.
What if I don't have use when I am ready to file my application?
If you haven't started "using" your trademark in the United States at the time of filing your application, you can file your application based on an "intent to use" the trademark. This means you can file your application, and let the application move through the examination process before you have actually "used" the trademark. But, you will have to show "use" of the trademark before it can be registered. It's important to be mindful of the deadlines imposed by the trademark examining attorney to demonstrate "use" of your trademark. If you aren't able to show "use" of the trademark in the timeline imposed by the USPTO, or obtain appropriate extensions of time to show use, the trademark application may be abandoned.
What if I also have a Canadian registration or application for the same trademark?
If you have a Canadian registration for the same trademark, you may be able to obtain registration of the trademark without demonstrating use of the trademark by relying on the foreign trademark registration as a basis for obtaining your U.S. registration. But it is important to note that even though you can obtain the registration without showing use, to maintain the registration you will eventually have to demonstrate that you are using your trademark between the 5th and 6th year post-registration. We often recommend basing your U.S. application on a Canadian registration to provide greater protection for your U.S. application if you either don't have use of your trademark when you're ready to file or aren't sure if you will be able to provide the proper specimens to satisfy the trademarks office of your use. The Canadian registration basis can provide you with an alternative to getting your trademark through to registration if you aren't able to show use.
If you have a Canadian application for the same trademark, that has not matured to registration yet, you can still file your U.S. application relying on the Canadian application, and use the eventual Canadian registration as the basis for obtaining your U.S. registration. However, the Canadian application will not likely proceed to registration before your U.S. trademark application is examined. In this case, your U.S. trademark application may be 'suspended' until your Canadian trademark makes it through to registration. For more information about Suspension of a Trademark Application, please see below.
2. SUSPENSION OF A TRADEMARK APPLICATION
Suspension of a trademark application simply means examination of the trademark application has been put on hold, temporarily. Suspension of a trademark application does not affect the validity of your trademark application – your application is still considered 'active'. It just means that the USPTO is unable to move forward with the next step in the examination process, so they have placed your application in suspension until they are able to move forward.
There are two reasons why a trademark application could be suspended.
- If the examining attorney finds a trademark application that was filed prior to your application that they believe is confusingly similar to your application. In this case, the examining attorney will suspend your application pending examination of that prior-filed application. If that prior filed application proceeds to registration, the examining attorney will likely issue an office action citing that trademark against your application. But if that application does not proceed to registration, for whatever reason, it will not pose a bar to registration of your application. Until the examining attorney knows what will happen to the prior filed application, they will have to suspend your application.
- If your trademark application is based on a foreign trademark application that has not matured to registration. If you've used a foreign trademark application as a basis for filing your U.S. application (for example, a Canadian trademark application for the same trademark and the same goods and/or services), your U.S. trademark application will not able to proceed to registration until you are able to prove that the foreign application has matured to registration, or you choose to remove the reliance on the foreign application. Until then, the examining attorney will suspend your trademark application after it has been initially examined. You can continue to request that your trademark application remain suspended for as long as it takes to obtain your foreign trademark registration.
Suspension of a trademark application is nothing to fear and is very common in the trademark application process.
3. THE SUPPLEMENTAL REGISTER
Unlike Canada, the United States has a Primary Register and a Supplemental Register for trademark applications. Trademark applications that the USPTO considers to be descriptive may be eligible for registration on the Supplemental Register. The Supplemental Register is a great alternative for trademark owners to obtain registration of a trademark that may otherwise have been rejected if it is descriptive. An applicant does not have to request that its trademark be placed on the Supplemental Register at the time of filing (though it may), because a trademark application can be moved to the Supplemental Register after filing, during the examination process.
Trademarks on the Supplemental Register still benefit from many of the same protections as those on the Principal Register. A registration on the Supplemental Register can still be used as a basis for a trademark infringement lawsuit, and it will still block the registration of identical or confusingly similar applications that were filed after it. Registrations on the Supplemental Register still appear in the USPTO database, providing public notice of the trademark, and registrations on the Supplemental Register can also be used as the basis for international applications through the Madrid protocol in the same way registrations on the Principal Register can.
There are, however, two notable differences between the rights and protections afforded by Principal Register versus the Supplemental Register.
The first is that a registration on the principal register is prima facie evidence of the validity of the trademark and the owner's exclusive right to use the mark. In the context of a trademark infringement lawsuit, when a trademark is registered on the Principal Register, the owner does not have to prove ownership or validity of the mark, and the burden shifts to the defendant to prove that their actions do not violate the trademark owner's rights. While a trademark owner can still rely on its registration on the Supplemental Register as the basis of their lawsuit, if the trademark is on the Supplemental Register the owner would still have to prove their ownership of the mark and the validity of the mark.
The second difference is that a registration on the Principal Register for more than 5 years can only be challenged under specific circumstances and is also eligible to be declared "incontestable". A number of grounds to cancel a trademark registration cannot be brought if the trademark has been registered on the Principal Register for more than 5 years. By contrast, registrations on the Supplemental Register could still be challenged at any time based on any of the allowable grounds.
It is also important to note that in order for a trademark application to be eligible for registration on the Supplemental Register, the trademark application must either be in use, or the trademark application must be based on a foreign application. If the trademark application is based on an intent-to-use, or a foreign application that has not yet matured to registration, the trademark application must be amended to show use or to rely on a foreign registration before it can be moved to the Supplemental Register.
Originally published 09 Nov 2023
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.