Trade mark examination in the United States of America can be a particularly challenging stage for Australian business owners.
There are differences in the USPTO's practices and trade mark law which result in stricter environment for US trade mark applications.
Trade mark examination in the USA is more likely to result in objections compared with Australian trade mark applications for three primary reasons:
Goods and Services: Trade mark examiners in the USA require much more specific goods and services claim compared with Australia.
Quantity of Trade Marks: There are many more trade marks in the USA than in Australia, increasing the likelihood that there are similar trade marks on the register.
Higher Descriptiveness Standards: The trade mark examination standards for descriptiveness are higher in the USA than in Australia.
How to file a trade mark in the USA
There are two main pathways to filing a trade mark in the United States: directly through the United States Patent and Trademark Office (USPTO) or via the Madrid Protocol.
If you're looking to protect your mark in multiple countries, the Madrid Protocol offers a cost-effective and efficient approach, using your existing Australian trade mark as a base.
This system streamlines the international filing process and is managed through the World Intellectual Property Organization (WIPO).
Read our detailed article on registering a trade mark application in the United States of America.
Markster can assist with both pathways, ensuring your application aligns with US trade mark examination requirements.
Understanding trade mark refusal in the United States of America
A trade mark refusal in the United States can occur due to several reasons. The most common reason is due to the likelihood of confusion with existing marks. It's also common for trade mark examiners to request that goods and services descriptions are narrowed before accepting that application. It's essential to understand specific grounds for refusal to mitigate risks and increase your application's chances of success.
Why do trade mark applications get refused in United States of America?
Trade mark applications in the US may be refused if they:
Are identical or similar to a registered mark covering related goods or services
Conflict with well-known marks
Present a likelihood of confusion in terms of the source or sponsorship due to their resemblance with other marks
Are descriptive or not sufficiently distinctive
Have unacceptable goods and services descriptions
Understanding these key reasons can prevent costly delays.
Exploring trade mark opposition United States of America
After a mark is examined and accepted, it is published in the USPTO's Trademark Official Gazette, and enters the opposition period. Any party who believes the mark conflicts with their existing rights can lodge an opposition. This process has specific timeframes, which, if necessary, can be extended for up to 180 days from the publication date with proper filings.
If you need support during opposition, Markster can guide you through this challenging phase.
Tips for a successful trade mark application in United States of America
For a successful US trade mark application:
Conduct a comprehensive trade mark search.
Ensure your mark doesn't closely resemble existing ones.
Expect changes to be made to your goods and services description.
Take advantage of extensions to respond to objections.
Markster is ready to help streamline your application process.
How does trade mark examination differ in the United States of America?
The USPTO receives many more trade mark applications than most other countries. The standards of trade mark examination are higher, which results in trade marks which can be accepted in other countries being rejected in the USA. Objections are more common, particularly with respect to goods and services descriptions.
The US focuses heavily on relative grounds examination, assessing the likelihood of confusion with existing registered marks. The examining attorney searches USPTO records to ensure your mark is distinct enough to prevent confusion with other sources of goods or services.
Key timelines for trade mark examination United States of America
While exact timeframes may vary, it's important to:
Prepare for the examination phase, which may prolong depending on objections or oppositions.
Be aware that you can generally extend opposition period timeframes up to 180 days from publication.
Steps to respond to trade mark refusal in United States of America
If your application faces a refusal, consider these steps:
Review the refusal notice carefully.
Gather evidence or arguments to address the issue, focusing particularly on differentiating your mark.
Get assistance from a trade mark lawyer.
Take advantage of extension requests if additional time is needed for response preparation.
For international trade mark strategy advice, contact Markster.
Avoiding common pitfalls in the USA trade mark process
Common pitfalls include overlooking similar existing marks and failing to properly address objections. Always conduct thorough research and prepare to substantiate your mark's distinctiveness if challenged.
Considering other countries for trade mark registration
While filing in the United States is advantageous, you may also explore options in similar jurisdictions. Consider:
These jurisdictions are popular for Australian businesses and can offer opportunities for market expansion akin to the US.
Ready to protect your trade mark internationally?
Taking your trade mark beyond Australia opens a world of opportunity. It's crucial to approach the process with a strategised plan. Whether you choose to file in the United States directly or via the Madrid Protocol, Markster is here to assist you at every step.
With our expertise, you can navigate the complexities of international trade mark registration smoothly. For detailed assistance, contact Markster today to ensure your intellectual property is well-protected.
The information provided in this article is general in nature and should not be relied upon as legal advice. For specific advice, please contact Markster.