United State Trade Mark Registration

Malaysia Hotline: +603-2141 8908

United State trade mark can be protects words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and indicate the source of the goods and can be register in U.S. Patent and Trademark Office (USPTO). In short, a United State trade mark is a brand name. United State Trademarks, unlike patents, can be renewed as long as they are being used in commerce.

The U.S. Patent and Trademark Office (USPTO) accepts applications for registration of both traditional marks (word, design and combination marks) and nontraditional marks (color, shape, sound, scent, touch and motion marks), as well as for collective marks and certification marks.

Word Mark (“standard character” drawings)—All letters and words in the mark are depicted in Latin characters; all numerals in the mark are depicted in Roman or Arabic numerals. The mark includes only common punctuation or diacritical marks and does not include a design element.

Design Mark (stylized wording and/or design)—The image must be in .jpg format, scanned at no less than 300 dots per inch and no more than 350 dots per inch, with a length of no less than 250 pixels and no more than 944 pixels and a width of no less than 250 pixels and no more than 944 pixels.

Color Mark—The US trade mark applicant must submit substantial proof of acquired distinctiveness and the logo in color, accompanied by a color claim naming the color(s) that is/are a feature of the mark and a separate statement describing where the color(s) appear(s) in the mark.

Shape (Configuration/Three-Dimensional) Mark (the shape and design of a product)—The US trade mark applicant must include a description of the mark indicating that the mark is three-dimensional and a drawing that depicts a single rendition of the mark.

Sound Mark—The file must be in .wav, .wmv, .wma, .mp3, .mpg or .avi format and should not exceed 5 MB in size for audio files and 30 MB for video files. The applicant must provide a detailed description, including any words or lyrics, of the sound.

Scent Mark—The US trade mark applicant must submit substantial proof of acquired distinctiveness; a detailed written description (no drawing is required); and a specimen of the fragrance.

Touch Mark—The mark must be represented graphically.

Motion Mark—The drawing may depict either a single point in the movement or up to five freeze frames showing various points in the movement. The applicant must also provide a detailed description of the motion.

Collective Membership Mark—The mark must be used by the members of a cooperative, an association, or any other collective group or organization.

Certification Mark—Any word, name, symbol and/or device used by a person other than its owner to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

United State Trade Mark Procedures

The U.S. Patent and Trademark Office (USPTO) will issue an official filing receipt. An US Trade Mark Application is typically examined three to four months after filing.

If the USPTO examiner objects to registering the mark on substantive grounds (such as a likelihood of confusion with other marks on the USPTO register or that the mark is descriptive), or raises in-formalities that must be addressed before the application can proceed (such as requiring amendments to the goods or services or requiring a disclaimer of generic words), an Office Action will be issued specifying each objection.

Once these issues are resolved, or if the examiner does not raise any objections, the application will be approved for publication in the Trademark Official Gazette and a Notice of Publication will be issued listing the publication date.

Any third party that believes it will be harmed by the registration of the mark may oppose the application, or file a request for an extension of time to oppose, within 30 days of the publication date.

If the application is not successfully opposed, the USPTO will issue a Certificate of Registration for use-based applications. An applicant has 36 months from the Notice of Allowance date to submit proof of use, known as the “allowance” period, or the application will go abandoned. Every six months during the allowance period, the applicant must file either a Statement of Use or a request for extension of time to file a Statement of Use indicating a continuing bona fide intent to use the mark for the goods and services in the application. Once the USPTO accepts the Statement of Use, the Certificate of Registration will be issued.

United State Trade Mark Registration

The United State trade mark registration is notified to the applicant and published in the U.S. Patent and Trademark Office (USPTO). The trademark is registered for 10 years, from the filing date, and is renewable by 10 year periods.