The U.S. market has long been one of the most attractive markets for companies from around the world. High purchasing power, a large audience, and the prestige of being in the U.S. market often make the U.S. a priority point for scaling a business. However, along with opportunities come risks, especially related to intellectual property protection. One of the key elements of this protection is trading name (or trademark) registration.

In the United States, the procedure for registering a trademark has a number of peculiarities that distinguish it from the rules in most other countries. Therefore, a business owner should understand in advance what steps will need to be taken and how to properly weigh the pros and cons before filing an application. Below we will go through these nuances in detail and provide recommendations that may help you navigate the complicated legal environment.

Why protect your trademark in the U.S.

1. Recognizability and credibility

A trademark (TK) gives customers a clear indication of who the manufacturer of a product or service is. In the highly competitive U.S. marketplace, it's important that consumers can easily identify your product. In addition, a consistent brand builds expectations of quality and style, building trust in the company.

2. Commercial Value

A registered trademark is a stand-alone asset that has value and can be sold, transferred or licensed. An example of a widely recognized valuation is the Google brand, which is worth over $40 billion. For many startups, it is the potential value of the brand that becomes the deciding factor in attracting investment.

3. Exclusive right to use

Registering a trademark gives the owner a monopoly on its use for specific goods or services. This means that in case of infringement, you can appeal to the court or to the relevant administrative authorities to stop the unauthorized use of your brand.

Whether it is obligatory to register a trademark

In the US, the rights to exclusive use of TK arise primarily from the actual use of the brand in commercial activities. In other words, if you are actively selling goods or services under a certain mark, you already have basic rights to it - even without registration. However, this does not mean that there is no point in formalizing TK.

Advantages of registration

• Presumption of validity. A registered trademark is presumed to be inherently legal and owned by you. In court, this can make it easier to prove rights to the mark.
• Constructive notice. Having an official registration means that all potential competitors are deemed to have been notified of your rights to the mark. If someone tries to use a similar mark, they will no longer be able to plead ignorance.
• Additional opportunities in disputes. In administrative proceedings and litigation, having a registration gives you greater leverage to protect your rights. You also get the right to use the ® (Registered) symbol.

When registration may be disadvantageous

• Publicity. By filing an application, you are effectively announcing the existence of your mark to the world. If the business is early stage and there is a risk of conflict with major competitors, registering too early may attract their attention.
• Descriptiveness. The U.S. does not register marks that directly describe the characteristics of a product or service. For example, if you sell cardboard boxes, using the word “Cardboard” as a trademark is unlikely to be approved. An exception is made only for those brands that, thanks to years of advertising and fame, have become associated with a particular company.

Is it worth it to go to a lawyer

U.S. law does not require an attorney or law firm to file an application with the United States Patent and Trademark Office (USPTO). There are thousands of entrepreneurs who fill out the forms on the USPTO website on their own and receive a favorable decision. For a relatively simple and unique mark, this independent route can be successful.

However, in practice, most applicants encounter various obstacles already at the application stage. The most common problem is receiving a “preliminary refusal” (Office Action) from the USPTO. This may be for formal or more serious reasons, including similarity to existing marks. A lawyer or consultant familiar with U.S. patent law can help:

• Analyze the risks even before filing (especially if you have a descriptive or disputed brand).
• Competently draft a response to an Office Action, if one has been issued.
• Save money in the long run by avoiding repeated filings and disputes in court.

Registration algorithm and useful recommendations

• Do some market research. First, do a routine Google search to make sure there are no matching or very similar marks to yours. Then check the database of registered TKs on the USPTO website. If you find an identical or confusingly similar mark, it's best to consider changing your brand - otherwise, there's a high risk of rejection.
• Evaluate the “descriptiveness” of your brand. If the mark directly communicates the properties of the product (for example, “Coffee” for a coffee shop), there is a high probability of rejection. You can either change the name, or first develop the brand and increase its recognition, and then apply for registration.
• Decide on the list of goods and services. Registration of TK in the U.S. goes by “classes”. For each class a separate fee is paid (from 225 to 400 dollars). It is important that the goods and services are actually offered for sale, as it will have to confirm the fact of commercial use.
• Select the basis for filing
  • Use in Commerce: if you are already using the mark in the United States.
  • Intent to Use: if you plan to enter the market within a maximum of three years. Once you have been pre-approved, you can finalize your registration as soon as you actually start selling the product or providing the service.
• Keep technical details in mind when filling out. The USPTO website has detailed instructions and guides to help you avoid the most common mistakes.

How ESPERO can help

ESPERO Company has been engaged in business registration and service in Georgia for a long time, and now we are ready to offer you services of trademark registration in the USA. Our specialists:

• Will conduct preliminary market search and analysis.
• Help you determine the optimal strategy and list of goods/services for registration.
• Take care of all aspects of the application preparation, including possible responses to Office Action.
• Guide you through the process of obtaining the registration certificate.

Maintain your competitive advantage and secure your intellectual property in one of the world's largest markets.

Want to securely protect your brand in the U.S.?

Leave a request at espero.ge or contact us through any convenient channel and we will help you to pass the procedure of trademark registration in the USA taking into account all the nuances.