Many companies, particularly technology start-ups, are particularly interested in the American market. In such cases, the characteristic sign of the own company or the own product should be protected as a US trademark.
However, the US trademark law is fundamentally different to Austrian and European trademark law: Signs have to be used in commerce in order to be registered as trademarks.
European Union Trademarks and Austrian trademarks are registered independent of the actual use in commerce and, for a grace period of five years after registration, cannot be attacked due to non-use. For a US trademark, however, evidence of use has to be furnished upon registration and for maintenance of the trademark.
For a US trademark, evidence of use documents (such as, for example, product labels, product photos, or marketing material) have to be presented upon filing. Alternatively, an intent-to-use declaration can be filed. Exceptions exist for trademark applications which are identical to foreign registered trademarks (such as Austrian or EU trademarks) of the same applicant.
After registration of the US trademark, evidence of use documents have to be filed in regular intervals of 5 years – otherwise, the US trademark will be cancelled ex officio.
A further peculiarity of US trademarks is the formulation of the list of goods and services. The USPTO does use a classification of goods and services quite similar to the Nice Classification used in Austria and Europe; however, it requests very detailed and precise information about the goods and services, for which the trademark is used. While it is common in Europe to use rather generic umbrella terms (such as “computer programs” or “cosmetics”), this is usually not possible for a US trademark.
Filing a US trademark is not a task for amateurs – let us help you. We do have a network of excellent US colleagues and regularly master even the most special requests.
