TM registration in the USA for CIS businesses is a guarantees of exclusive rights to the brand, which helps protect the company from unfair competition, increases customer confidence and significantly enhances the business value. However, the process of registering a trademark in the US for non-residents, especially from the CIS, has its peculiarities.
In this publication we will tell you in detail how to go through the procedure of trademark registration in the USA, what pitfalls arise and what insights will help to optimise the process and avoid mistakes. You will get a practical guide adapted specifically for companies and entrepreneurs from the CIS.
TM registration in the USA for CIS businesses: what is a trademark and why do you need one?
Today, the USA is one of the largest markets with high potential for international business. Entering the US market opens up great prospects for growth, attracting investment and increasing brand awareness. However, successful expansion is impossible without reliable legal protection of intellectual property.
In modern business, a brand is not just a name, but a powerful asset that guarantees customer loyalty and a sustainable competitive advantage. Trademark (TradeMark, TM) is a designation that serves to identify the goods and services of one manufacturer/seller and distinguishes them from those of competitors.
Trademark registration in the US for CIS businesses can be done directly through the USPTO - if the focus is only on obtaining protection in the States. Another option is to use the Madrid Protocol, which is the optimal solution if coverage is needed in many countries, including the US.
- A word mark is a name, slogan, or any textual designation.
- Pictorial mark - logo, emblem, symbol.
- Combination mark - a combination of text and image.
- Volumetric sign - the shape of a product or packaging.
- Sound mark - a recognisable sound or melody.
In the States, an international classification is used - Nice Classification - with a division into 45 classes. The correct choice of classes affects the scope of rights and the success of registration.
Registration of a trade mark in the USA provides the right to solely use the mark throughout the state for certain products/services. The legal framework helps to prevent competitors and fraudsters from using similar marks. Registering a trademark in the USA provides an increase in the value of the company. TM is an intangible asset that can be sold, licensed, used as collateral. In addition, TM registration in the USA facilitates litigation and proving your rights.
Peculiarities of TM registration in the USA for non-residents
Unlike many other countries, where TM protection is granted upon official registration, the US system is based on a different principle: ownership can arise even if the mark is actually used in commerce (based on case law). Nevertheless, only official registration with the United States Patent and Trademark Office provides the most extensive range of legal protection.
United States Patent and Trademark Office. Official website
The main law governing trademark registration in the United States is the Lanham Act of 1946. It describes the registration process, the rights of owners, reasons for refusal and methods of defence. Foreign nationals and CIS companies have the right to apply for TM registration in the US on the same basis as residents, but to file an application one must:
- use the mark in commerce in the country (Use-Based Application); or
- file an application with the intention to begin use in the future (Intent-to-Use Application).
What is Use in Commerce
Use in Commerce - the actual use of a mark in commerce when the goods/services are offered to clients in the United States. For non-residents who do not have a representative office or physical presence in the States, this can be a problem - but it is possible to apply on an Intent-to-Use basis.
Address and representative requirements
To apply, the applicant's address and contact information must be provided. It is recommended that non-residents from the CIS use the services of a registered agent or law firm in the United States who can act as a trusted representative and accept correspondence from the USPTO.
How to use TM, SM and ® trademark symbols correctly: recommendations from lawyers
Correct use of trademark symbols is an important element in brand protection. Regardless of whether your TM is officially registered, you can and should signal your rights to others.
TM and SM Symbol: When and How to Use
If you have not yet filed a trademark application in the United States, you can still use special designations. The TM symbol (™) is used for goods and the SM symbol (℠) is used for services. These designations indicate that you claim monopoly rights to use a name, logo, slogan even without official registration. In this way, you declare your claim to the trademark in advance, even if the registration has not yet been completed.
When can you use the ® symbol?
When you successfully register a trademark in the United States under the federal system, you are authorised to use the ® symbol. This is official confirmation that the mark is legally protected. Please note:
- The ® symbol can be placed anywhere around the trademark, but it is most often placed as a superscript on the right side of the mark.
- Use of the ® symbol is only permitted for the products/services specified in the certificate of registration.
Violation of these rules may result in legal consequences, including charges of unfair competition or misleading consumers.
International, state and federal registration of TMs in the USA
Choosing the right registration strategy is crucial in establishing a sustainable and competitive market position for your business. It is essential not only to register the rights to the brand, but also to determine the optimal level of protection - whether it is registration at the level of one state, nationwide, or internationally. This decision depends directly on the current reach of the business, sales geography and plans to enter new markets.
Trademark registration in the US: limited protection within a state
If you are doing business in only one state, state registration of a TM may be sufficient for the initial phase. However, it is important to consider a number of restrictions:
- The trademark will not be protected outside the state. If you decide to expand to other regions, you will need to register the mark separately in each state or apply for federal registration.
- Not all states maintain publicly available databases, which can lead to situations where third parties use identical or similar marks without knowing your rights.
U.S. Federal Trademark Registration: Countrywide Rights
For companies operating in multiple states or planning to scale, federal registration of a TM through the USPTO is a mandatory protection measure. Benefits of federal registration:
- Protection throughout the U.S. and its territories, including Puerto Rico, Guam and the Virgin Islands.
- Inclusion in the USPTO's public database, which helps warn potential infringers.
- A basis for filing infringement lawsuits in U.S. federal courts.
Global protection
For CIS companies planning international development, registering TM only in the USA is the first step. Next, a global brand protection strategy is important. The Madrid system is an international TM registration mechanism managed by WIPO. It allows you to file a single application and obtain protection in several countries at once. The main advantages are time and cost savings, unified process of rights management and renewal, convenience of TM portfolio management.
International registration procedure:
- Filing an application in the country of origin (in this case, TM registration in the USA for a CIS business) is the basis for filing an international application.
- Filing an application with WIPO specifying the countries to be protected, including the USA.
- Obtaining international protection.
Step-by-step guide to registering a trademark in the USA
Before filing an application, a search for matches and similarities with already registered marks must be carried out. This avoids rejection and saves money and time. It can be carried out:
- Free search on the USPTO website (TESS - Trademark Electronic Search System).
- Search on paid professional services with advanced functions.
Application for registration of trade mark rights in the US is made through the TEAS (Trademark Electronic Application System). TEAS Plus requires the precise use of product/service terminology from a USPTO approved dictionary (ID Manual). This reduces the risk of rejection but limits flexibility. TEAS Standard allows goods to be described more freely, but increases the likelihood of having to respond to Office Actions.
The fee depends on the chosen application form and the number of classes. The fee for each class is paid separately. A USPTO examiner checks the application for compliance with the requirements, similarity with other marks, and completeness of data. In case of problems, the applicant is sent an Office Action - a formal notice requesting correction or explanation of points. The applicant must respond within 6 months, otherwise the application will be rejected.
If the application passes inspection, the mark is published in the Official Gazette - the USPTO's public registry. Within the prescribed 30-day period, third parties have the right to file objections to the registration. If there are no objections or they are rejected, the USPTO registers the mark and issues a certificate. With Intent-to-Use, after publication, proof of actual use must be provided before registration can be obtained. Trademark registration in the US for CIS businesses takes an average of 12 to 18 months.
TM registration in the US is valid for 10 years from the date of issuance. It is necessary to file supporting documents (Declaration of Use) and pay fees after 5 and 10 years. Failure to renew in a timely manner leads to cancellation of rights.
Contact our experts and get answers to your questions.
TM registration in the USA for CIS businesses: how to protect your rights
TM infringement is the unauthorised use by third parties of an identical or similar mark in commerce for goods/services that are similar to those for which the mark is registered. Such action can cause consumer confusion and significant economic losses for the rightful owner.
- Selling counterfeit goods with a mark registered by another entity. For example, if an unscrupulous seller distributes counterfeit goods under your brand, it not only reduces the credibility of your products, but also damages your image and revenue.
- Use of a similar logo by a competitor. If a competitor uses a visually or phonetically similar mark for products or services that overlap with your market, it is misleading to customers.
- Registration of similar marks by third parties. At times, unscrupulous entities attempt to register a similar trademark to take advantage of your brand's reputation or to block your business.
To assess the existence of trade mark infringement in US practice, courts and examiners are guided by a set of factors, the main purpose of which is to establish whether there is a genuine risk of consumer confusion. The main assessment criteria are:
- The degree of similarity of signs. Visual, phonetic and conceptual similarity of the marks is analysed.
- The kind of goods and services. If marks are used in relation to the same or similar categories of goods and services, the likelihood of infringement increases.
- Marketing channels and target audience. It is important to consider how and where the goods/services are sold and who the end user is. If the target audience and sales channels are the same, the risk of confusion increases.
- Availability of evidence of consumer confusion. Practical cases where customers have mistaken the infringer's products for yours play a crucial role in litigation.
If you are interested in registering a TM in the USA for a CIS business, you should know that the law provides for strict measures aimed at protecting the rights of owners and preventing illegal use of TMs. Even single cases of using someone else's mark can have a negative impact on a company's reputation. In particular, it may lead to financial damage. The damage may be in the form of lost profits, reduced market share, and brand protection costs.
Depending on the scale and nature of the infringement, the guilty party may face injunctions, compensation, fines and even criminal prosecution. If you discover a violation of your rights, it is important to know how to act promptly and effectively.
The first and most common action is a written request to stop the unlawful behaviour - a Cease & Desist Letter. In this letter, the owner of the registered TM:
- Confirms his/her rights to the mark.
- Indicates the fact of infringement.
- Demands that the unfair use of the mark cease immediately.
- Warns of possible legal consequences if the request is ignored.
In many cases, such an official request helps to resolve the conflict without the need to go to court.
If the letter does not achieve the desired result, the next step may be negotiation or alternative dispute resolution (mediation). This allows the parties to reach a compromise and save the cost of litigation.
If infringement continues and peaceful measures have failed, you must file a lawsuit in federal court to enforce your trademark rights in the United States. The court may issue an injunction to stop the infringer from using the disputed mark. The TM owner may seek actual damages, lost profits and attorneys' fees. For serious infringements, such as counterfeiting, there is the possibility of criminal penalties up to imprisonment.
Cost of TM registration in the USA for CIS businesses
The basic fee for filing an application with the USPTO is 350 USD for each class of goods/services. Accordingly, if the mark covers, for example, two classes (one - clothing, the other - accessories), the amount is doubled - 700 USD. Choosing the right classes is a key aspect that directly affects the cost of registration. Mistakes at this stage can lead to the need to resubmit the application and, as a result, to additional costs.
To retain its rights, the owner of the mark must periodically file documents confirming the use of the TM in circulation. Every 10 years, the following documents are required to be filed:
- Declaration of Use.
- A request for the prolongation of registration.
The cost of filing these documents is 650 USD for each registered class. Thus, if your trademark in the US is registered in two classes, the total payment will be 1,300 USD every 10 years.
Registering TM in the USA for CIS business: insights and tips
America is considered to be the land of opportunity, but doing business in the local market is a challenge for many entrepreneurs from CIS countries. Firstly, the American legal system is fundamentally different from the realities familiar to CIS entrepreneurs. Mistakes that in their home country might have resulted in a warning in the US can lead to fines, lawsuits and blocking of operations.
Secondly, in order to work with American partners, banks, marketplaces or investors, it is necessary to meet local standards: transparent financial statements, licences and compliance with consumer and data protection legislation. The same applies to TM registration in the US for CIS companies. All this requires not only understanding the rules, but also adapting business processes.
Registering a trademark in the USA becomes a particularly difficult aspect for CIS companies. Without a registered TM, it is impossible to fully protect the brand, enter American online platforms (e.g. Amazon), and fight against copies and counterfeits. It is essential to select the appropriate class, accurately describe products or services, provide evidence of the brand's use in commerce, and meet deadlines.
CIS companies often face refusals, administrative actions and the need for legal correspondence with the USPTO. One of the most frequent reasons for refusal of registration is the similarity of the new mark with already existing registered TMs. In order to minimise time and financial costs, a detailed search of the USPTO database is mandatory. A professional search allows:
- Evaluate the risks of rejection.
- Find possible conflicts with similar marks.
- Select unique elements for the future brand.
This step should not be neglected - saving money on the search often costs a lot of money in case of re-filing or litigation.
Filing an application for TM registration in the USA is a technically complex process. Errors in the documents, incorrect execution or insufficiently competent description of classes can be the reason for refusal. Therefore, it is advisable to enlist the support of legal advisors with knowledge of US law and procedures. For CIS entrepreneurs, this is a kind of insurance, which significantly increases the chances of successful registration.
The law requires not only that the TM be registered in the US, but also that its use be evidenced. Failure to actually use the mark for 3 years may result in loss of rights to the mark. Proof of use can include reporting, proof of use of the mark on packaging, advertising, online shop, sales documentation and marketing materials. This will significantly strengthen the position of CIS businesses when renewing TM registration in the US and potential disputes.
For CIS businesses seeking to strengthen their presence abroad, to protect their brand from unfair competitors or to legally execute a corporate restructuring, the transfer of TM rights can be a strategic step. The essence of assignment is a formal transfer of rights from one person (right holder, assignor) to another (acquirer, assignee). This can be either a complete assignment of all rights to the mark, or a partial transfer, for example, limited to certain goods or services. The peculiarity of the American system is that the transfer itself is considered complete only after registration of the relevant changes with the USPTO.
Often companies decide to contribute their trade mark to the share capital of a new legal entity in the US, which requires a formal transfer of rights. In addition, it is not uncommon in practice for a mark to be registered in the name of a third party acting in the interests of the main company, after which a legally correct transfer of rights is required. In the situation of active entry into international markets or when concluding franchise agreements, it is also necessary to record the change of rights holder in accordance with US law.
The procedure for transferring trade mark rights in the USA includes several steps. The first step is the preparation of a legally correct Assignment Agreement. This document must specify the parties to the transaction, a full description of the transferred trade mark, the registration number in the USPTO (if it already exists), the exact scope of the transferred rights. The second step is notarisation and, if necessary, apostille of the document. This is especially important if the contract is signed outside the US, for example, in CIS countries. American law requires that documents executed abroad be legally binding in the US, and this is achieved through legalisation (apostille), which is recognised at the level of international law.
Next, the transfer of rights is registered with the USPTO. The registration is done online through a special ETAS (Electronic Trademark Assignment System). Once all the necessary documents have been submitted and the state duty has been paid, the USPTO reviews the application and issues an official confirmation. CIS companies undertaking such a procedure for the first time face a number of legal and technical nuances. The difference in legal systems (Anglo-Saxon common law in the US and continental law in the CIS) can cause difficulties in understanding terminology, the structure of the contract and the scope of the rights to be transferred. It is also necessary to take into account the requirements for translation of documents, their legalisation, correct indication of legal names and addresses of the parties. Errors in wording, incomplete data or non-compliance with USPTO requirements may cause the refusal in transfer registration. This may lead to serious legal risks.
Ignoring these risks can have negative consequences. An improperly registered transfer may result in the loss of trademark rights in the US for CIS businesses, which may affect copy protection, access to marketplaces, franchise platforms and other commercial channels. In the event of a legal dispute, the lack of a properly executed and registered transfer deprives the company of legal defence. In addition, errors in documents may cause conflicts with business partners or investors, especially if the brand was planned as part of an investment asset.
If your plans include registering a trade mark in the US for a CIS business and, in the future, transferring rights to this asset of your business, it is important at the initial stage to enlist the support of a law firm with experience in supporting CIS companies entering the US market. Qualified lawyers will help you to properly draft the assignment agreement, taking into account both US and international law, properly prepare a package of supporting documents, ensure the correctness of translation and legalisation, and carry out the registration procedure with the USPTO without legal risks.
Conclusion
Registering a trademark in the United States offers CIS businesses great prospects for entering the largest market and provides strong legal protection for the brand. The process requires proper preparation and constant monitoring. The use of professional legal support will help to avoid mistakes and successfully pass all stages.
If you are planning to register a trademark in the USA or need advice on intellectual property, you can contact our specialists. We can provide comprehensive support in registration of TM in the USA for CIS businesses and provide follow-up support.
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