Question
Hello! I am curious about Trademark registration in the United States. On a law firm website I read that for the purpose of registering a Trademark in the United States, a company has to prove that the Trademark is used commercially. How exactly would that work for us as a foreign company?
Thank you very much!
We design and develop technology for Wearables. We are located in Sweden but improve our customers lives globally.
Answers: 2 public & 1 private
Yes, U.S. trademark law maintains a pretty strict definition of use. For goods, the mark must be affixed to the goods as they travel through interstate or foreign commerce. That means that if you are selling wearable devices, the mark must be visible on the devices or their packaging such that consumers notice the mark when purchasing the goods and therefore learn that the mark identifies those particular goods. If you are offering a service, i.e. designing software for the wearable, then the mark must be used in association with the service which could be the mark used in an ad, on a website or in marketing materials advertising and describing your software development service. Since the idea behind a mark is that it identifies the goods/services for a consumer, all of these uses presuppose that the mark is placed prominently where the consumer will readily notice the mark upon making its purchase. Consequently, many non-U.S. trademark applicants may have to line up their U.S. distributors in order to have the evidence of mark usage sufficient to be granted a registration.
However, as a non-U.S. or Swedish entity, you have the ability to avoid or substantially defer this use requirement if you have a Swedish or European trademark registration because the USPTO will grant a U.S. registration based upon the registration of the mark in Sweden or the EU. Evidence of use of the mark can then be deferred until 6 years after the registration date when the USPTO will require evidence of the mark's use in order to be maintained on the Register.
** Please note my answers disclaimer in my bio after the question.
Recent questions
I sometimes see questions on forums like Quora about how to stop people stealing your invention i...
4 5386 2I am looking for useful sources on protecting copyright. I am in the process of writing a book ba...
3 6115 2What is the current wisdom on compiling news feeds on a third party website so far as copyright i...
1 3962 0This might be a silly question but I’m a bit confused by ‘prior disclosure’ as it applies to pate...
2 4823 1Do you have a question about your invention or intellectual property?
Search the questions below or post your enquiry to one of our experts via Directory.
(User questions are no longer posted publicly on this page.)