Trademark – The United States (US)

Opposition
The opposition period precedes registration. Once your trademark has been registered, it is no longer possible for a third party to file an opposition.

It should, however, be noted that the fact that nobody files an opposition does not prevent a third party from initiating cancellation proceedings against your registration in the future. If so, we will as your agent be informed thereof and will of course contact you as soon as we are duly notified. The right to challenge a registration based on prior use expires five years after the date of registration.

Use
Use of a trademark registration is compulsory. During the sixth year following registration, the owner of the trademark must file with the US Patent and Trademark Office a written assurance that he is using the mark in the US or in commerce between the US and another country. Omission to file such an assurance will render the registration invalid. We will notify you well in time of the duty to file the assurance.

In addition, a trademark registration can be cancelled, if it has not been used for a period of three years preceding the application for cancellation, unless this omission is due to acceptable circumstances. Entitled to plead a case against the proprietor of the trademark before the US Patent and Trademark Office or a court, is anyone who sustains/suffers/incurs detriment or prejudice from the continued existence of the registration that is not in use.

It is important to note that the trademark, particularly those containing a device, must be used in its registered design. Upon proving use of a trademark, the Patent Office or a court may accept as equivalent, use of the mark in a shape/design/make where the differing elements do not materially alter the distinctive character of the registered form of the mark.

Marking
Marking is compulsory only to recover projects or damages in a federal court action for infringement of a federally registered mark. A common marking is “Registered in the U.S. Patent and Trademark Office”, “Reg. U.S. Pat. & TM. Off.” or ®.

Omitting the use of marking may deprive the owner of the right to claim certain damages where the infringer has used the mark in good faith.

Registered owner
The consequence of not recording changes in title varies from country to country. In some countries, it is an absolute condition that the entity claiming protection is the same entity that is recorded as owner in the national registry. In other countries failure to record changes in title may make it more difficult, for instance, to file renewal documents or to file lawsuits against infringers. Thus, we highly recommend that changes of name and assignments are duly recorded. Please contact your consultant at AWA for more information.

Licensing
It is possible to license a trademark in the US although there are some requirements that have to be met to avoid serious consequences. Please contact your consultant at AWA if you want to know how to create a valid licence in the US.

Pledging
It is possible to pledge a trademark in the US. It is clearly advisable to record the pledge. Please contact your consultant at AWA for more information on how to create a valid pledge in the US.

Watching
The registration of a confusingly similar trademark can be revoked only by your actions, typically by means of a cancellation action. Please feel free to contact us when in doubt. We recommend that you use our watching service in order to improve your chances to detect confusingly similar trademarks that may have been registered despite the existence of your trademark.

Alterations in Laws
Please note that these requirements may change over time and AWA does not assume any responsibility to keep you updated of any legislative or other amendments. In order to provide yourself with updated and current information, do not hesitate to contact your consultant at AWA.