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How to protect your trademark in the US

Law Offices of Yu & Associates

How to set your company's product and image apart from other companies and how to protect your products from intellectual property right infringement are unavoidable issues when operating a company in the US. Whether you're an American company, or a foreign company who wants to sell your products or services in the US market, protecting your company's trademark from infringement and misuse is something you can't afford to ignore. First of all, as the first protective measure for your brand and trademark, you need to register your trademark. Second, if your trademark is infringed, you will need to file a lawsuit to regain control of your intellectual property.

The US uses the "first to use" rule, unlike many other countries which use the "first to file" rule. So do you even need to register your trademark in order for it to be protected in the US? The answer is yes. Even though the US uses the "first to use" rule, registered trademarks have a lot of advantages and rights which you don't want to lose out on. First, it can prevent unintentional use of your trademark across the entire US. Second, those with registered trademarks can bring suit in Federal court if the trademark is infringed. Third, those with registered trademarks can sue for damages that are three times your losses due to infringement. Fourth, registered trademarks are assumed to be in effect, and five years after registration, can become incontestable, meaning no one can object to their use. Fifth, registered trademarks can be registered with the customs service in order to prevent importation of infringing products.

Therefore, the first step in protecting your trademark is to register it with the US Patent and Trademark Office (USPTO). Trademark registration protects the marks used on commercial products (such as Mercedes Benz or Microsoft) or services (such as FedEx or CitiBank). The registration process uses the international trademark classes, which consist of 45 different classes for products and services C for instance, medical equipment is class 10; paper and printing products are class 16; teaching and entertainment services are class 41; restaurants are class 43. Based on your companys particular products or services, you can apply in one class or in several.

When you register a trademark in the US, you do not need to be already using the trademark. You can register based on "intent-to-use," and then convert it to actual use within three years. This means you can submit a trademark application as soon as you've thought of a trademark, and then later submit materials showing it in actual use and have the trademark finally approved.

What if someone else registers your business's trademark, even though you have already been using it in the US or another country? Your company can prove that you that were already using the trademark before the other party registered it, then you may still be able to get your trademark back. Since the US uses the "first to use" rule, then if you did use the contested trademark first, then you have the right to its use. You could sue the infringer for providing false information to the USPTO and on that grounds, have the infringe's trademark registration cancelled. After the infringing registration is cancelled, then you can register yourself to protect your trademark.


The above is a general introduction to immigration policies, and should not be construed as individual legal advice. For specific legal questions, please contact the Law Offices of Yu & Associates. Attorney Xiaohui (Sharon) Yu is a graduate of New York University School of Law, one of the top five law schools in the US, and has practiced law at some of the top firms in the US, UK and China.

Tel: 301-838-8986, Fax: 202-595-1918; E-mail: syu@yulegal.com, Address: 110 N. Washington St., Suite 328E, Rockville, MD 20850. (All rights reserved.)

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