Trademark rights are governed by national laws and therefore having a trademark registered in one country does not automatically give you rights in other countries. That’s why we offer both Canadian and U.S. trademark registration services.
CorporationCentre.ca offers U.S. trademark registration services through an affiliated U.S. trademark agent.
US Trademark Application Process
There are two types of trademark registration applications in the United States Patent and Trademark Office (USPTO).
1. Use Application
If you are engaged in “commercial use” of your trademark, a “Use Application” may be filed. “Commercial Use” means that you have sold or delivered goods, or rendered services in the United States under the trademark. The application must state the date of first Commercial Use and must include a “specimen” of the trademark. A specimen is digital image of a label, packaging, photo of the product showing the trademark or advertising of services showing the trademark and describing the services. When your application is approved, your trademark is registered and the USPTO issues a Certificate of Registration. Your trademark protection is retroactive to the date of first Commercial Use stated in your application.
2. Intent-To-Use Application
If, like most applicants, you have not yet started selling products or services in the United States at the time of application, you may file an Intent-To-Use application. It does not require a date of first Commercial Use or a specimen in the application. When your application is approved, the USPTO issues a Notice of Allowance. You must then file a Statement of Use indicating the date of first Commercial Use and providing a specimen. Upon acceptance of the Statement of Use, your trademark is registered and the USPTO issues a Certificate of Registration. Your trademark protection is retroactive to the date of the application.
Screening and Filing
All services before the USPTO for your trademark are conducted by our affiliated US attorneys. The Attorneys conduct a screening of the USPTO database for identical or highly similar registered trademarks that will likely block registration of your trademark and provide to you a written report. If the screening concludes that an application is not viable, the Attorneys will screen an additional trademark of your choice without additional charge.
When your trademark has been successfully screened, the Attorneys will prepare the application including the identification of products or services. This can be an important decision affecting approval of the application. If it is a Use Application, the attorneys will assist in selecting a specimen and date of first Commercial Use. The attorneys will electronically file the application and transmit any specimen. The USPTO will assign a Serial Number to the application. The Attorneys are the Attorneys of Record for the application and will handle all communications with the USPTO until registration or final refusal.
Examining Attorney Review
A USPTO Examining Attorney will review the application. It typically takes three to four months for your application to be assigned to an Examining Attorney. Registration of your trademark will be refused if the Examining Attorney concludes that there is a likelihood of confusion between your trademark and an existing registered trademark. The appearance, sound and meanings of the trademarks are considered as well as the products or services. Registration may also be refused if your trademark is deemed to be merely descriptive of your products or services. It is also common for an Examining Attorney to require minor changes to an application or request additional information. The Attorneys handle initial refusals, communications and change requests without additional charge.
If no refusals or additional requirements are identified, or if any refusals or other requirements are satisfied, the Examining Attorney approves your trademark for publication in the Official Gazette. Publication in the Official Gazette commences a thirty-day Opposition Period. During the Opposition Period, members of the public may file an Opposition Proceeding to oppose registration of your trademark. They may also obtain extensions of the Opposition Period. Opposition Proceedings are expensive, complex proceedings that are commenced in a relatively small number of applications.
After Your Trademark is Registered
Registration owner files declaration: Between the beginning and end of the 6-year period after the registration date, the registration owner must file a Declaration of Continued Use (fees apply). Failure to do so will result in the cancellation of the registration.
Registration owner files Declaration/Renewal: Within one year before the end of every 10-year period after the registration date, the registration owner must file a Declaration of Continued Use and Application for Renewal (fees apply). Failure to do so will result in cancellation or expiration of your registration.
Our affiliated Attorneys are happy to assist you with these Post-Registration filings.
Registering a US trademark doesn’t have to be complicated.
Our FAQ can answer some of the most common questions about US trademarks that owners like you want to know.
Not sure where to begin?
Helping Canadian Businesses
Each year Corporation Centre helps thousands of Canadian owners and managers to formally register, manage, and grow their businesses from the convenience of their office.