Trademark registration in the United States can be done in one of the following ways:
• filing an application for registration of a trademark through the Ukrainian Intellectual Property Institute in accordance with the Madrid system;
• filing an application for registration of a trademark through the United States Patent and Trademark Office (USPTO), in accordance with national law.
In the first case, simultaneous registration is possible in other countries that have signed the Madrid Agreement Concerning the International Registration of Marks, and in the second case, legal protection of registered trademarks will extend only to the United States.
Once you determine that the type of protection you need is, in fact, trademark protection, then selecting a mark is the very first step in the overall application/registration process. Businesses and individuals new to trademarks and the application/registration process often choose a mark for their product or service that may be difficult or even impossible to register and/or protect for various reasons. Before filing a trademark/service mark application, you should consider:
• whether the mark you want to register is registrable, and
• how difficult it will be to protect your mark based on the strength of the mark selected.
You must identify your mark format: a standard character mark, a stylized/design mark, or a sound mark.
It is critical you identify clearly the precise goods and/or services to which the mark will apply.
Always search the USPTO database to determine whether anyone is already claiming trademark rights in wording/design that is similar and used on related goods/services through a federal registration.
Before filing an application, you must know what your "basis" for filing is: use in commerce basis, intent-to-use basis, foreign registration basis, foreign application basis, international registration (based on the Madrid Agreement). Each “filing basis” has different requirements that must be met before a trademark may proceed toward registration.
Yaremchuk & Partners will provide you with legal advice on trademark registration in the United States, as well as assist you in preparing all the necessary documents.