Protecting Your Trademarks Abroad Series - USA

By Trish Sawhney

Photo by Ferdinand Stöhr on Unsplash

For the next few weeks, we will be providing general guides to trademark protection in various jurisdictions globally. The information in these guides have been provided by the Canadian Department of Industry. Please note that these guides do not constitute legal advice and are merely intended to act as an aid if you are considering global expansion.
This week’s guide focuses on protecting your trademarks in the United States.
 
Where is IP registered in the United States?
 
The United States Patent and Trademark Office (USPTO) is the U.S. federal agency responsible for granting patents and registering trademarks.
 
Trademarks in the United States
 
What is it: In the U.S., as in Canada, a trademark is a combination of letters, words, symbols and/or designs that distinguishes your company's goods and services from those of others in the marketplace. The USPTO also accepts applications for the registration of non-traditional trademarks such as scent and sound.
 
Filing System: The U.S., like Canada, follows a "first-to-use" system for trademark rights. This means that whoever used the mark first in the U.S. marketplace will own the rights to it even if the mark is not registered. However, you should still consider registering your trademark with the USPTO as registered trademarks are easier to enforce and have a number of other important advantages over trademarks that are not registered.
 
Registration Period: A trademark is registered for 10 years and can be renewed every 10 years.
 
Non-Use: If you are not regularly using your trademark in the U.S. marketplace it may be subject to a dispute or challenged for non-use.
 
IP Enforcement in the United States
 
There are numerous ways to enforce your rights against unauthorized use of your IP in the U.S.:
 
• The U.S. Customs and Border Protection (CBP), a bureau of the Department of Homeland Security, helps prevent counterfeit and pirated goods from entering the U.S. The CBP can seize and detain imported goods which violate U.S. IP rights.
 
Registered trademarks and copyright can be recorded electronically with the CBP. This is a quick, easy, and cost-effective way to protect and enforce IP rights. CBP officers can access a database of recorded IP and monitor imports to prevent the transport of counterfeit goods and goods bearing infringing trademarks.
 
• Counterfeiting, piracy and other potential contraventions of IP rights can also be reported to the National Intellectual Property Rights Coordination Center, which investigates sources of goods that violate IP rights to identify and prosecute organizations and individuals that produce, smuggle, or distribute such goods.
 
• Legal proceedings can be started. Mediation and arbitration, which are generally more informal, less adversarial, cheaper, and settlement-focused, can be used as alternatives to going to court.
 
• A "notice-and-takedown" process may be initiated by copyright holders by sending a takedown notice to an Internet service provider, search engine, host, or other type of site owner/manager to remove from a website material that is infringing their copyright.

​Interested in expanding your trademark protection into the United States marketplace? Contact us today.