Applicants from outside of the United States, including Canadian applicants, who want to apply to register a trademark in the United States is required by the United States Patent and Trademark Office (USPTO) to hire a U.S.-licensed attorney.
With an attorney licensed in the State of New York, we can help you apply for registering a trademark directly right here in Canada, so that you do not need to hire someone in the United States to do so, or even worse, hire someone in Canada, who then hire an attorney in the United States to actually deal with USPTO.
To apply for to register a trademark in the United States, the following information will be required:
- Applicant Information, including name, entity type, address, and email address
- A trademark, which can be either in standard character format or special form format.
- A standard character format shows a trademark in text only (without a design) in no particular font style, size, or color.
- A special form format shows a trademark with stylization, designs, graphics, logos, or color. These marks are also called “stylized trademarks” or “design trademarks.”
- Identifications of the Goods and/or Services.
- At least one of the following bases:
- Additional Statements.
- Signed Declaration
Use in Commerce Basis
To apply to register a trademark in the United States on this basis, the following information will be needed:
- The date of first use of your mark anywhere in the world on the goods or in connection with the services.
- The date of first use of your mark in commerce in the United States on the goods or in connection with the services:
- A mark is in use in commerce with goods when (1) the mark is placed on the goods, packaging for the goods, or displays associated with the goods (including webpage displays), and (2) the goods are actually being sold or transported in commerce.
- A mark is in use in commerce with services when (1) the mark is used in the sale, advertising, or rendering of the services, and (2) the services are actually being rendered in commerce.
- One “specimen” for each class showing how you use the mark in commerce with the goods and/or services, and the following statement: “The specimen was in use in commerce at least as early as the application filing date.
Intent-to-use basis
A statement that you have a bona fide intention to use your mark in commerce with your goods and/or services in the near future.
Foreign registration basis
To apply to register a trademark in the United States on this basis, the following information will be needed:
- A copy of your foreign registration of the same mark from your “country of origin” (the country in which you are domiciled, incorporated or organized, if a business; or in which you are a national, if an individual; or you have a bona fide and effective industrial or commercial establishment). The copy must be a true copy, photocopy, a certification, or a certified copy of a document issued to you by or certified by the intellectual property office in your country of origin. And the foreign registration must be in force at the time the USPTO issues a registration based on your foreign registration. If the foreign registration has expired or will expire before the U.S. registration will issue, you must submit evidence (proof of renewal, such as a copy of a certificate of renewal or other certification from the intellectual property office of the foreign country or a copy of the foreign registration showing it has been renewed) that the foreign registration has been renewed and will be in force at the time registration issues in the United States.
- An English translation of the foreign registration or proof of its renewal if the foreign registration or proof of renewal is not written in English. The translator should sign the translation.
- The listing of goods and/or services should not exceed the scope of the goods and/or services in the foreign registration.
Foreign application basis
To apply to register a trademark in the United States on this basis, the following information will be needed:
- A timely “claim of priority,” that is, a claim of priority that has been asserted in the U.S. application within six months of the filing date of the foreign application.
- (a) The filing date, serial number, and foreign country of the first regularly filed foreign application, or (b) a statement that the U.S. application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.
- A listing of goods and/or services that does not exceed the scope of the goods and/or services in the foreign application.
Please note that although you may file an application on this basis and receive a priority filing date, this basis does not provide a registration basis. You will still need to establish a registration basis such as a use in commerce and/or a foreign registration basis.
Additional Statements
Depending on the circumstances, one or more of the following statements need to be provided:
- The same mark has already been registered with the USPTO by you, but the owner name in the prior registration is not the same as in the new application.
- The mark includes color.
- The mark includes a design or stylized font.
- The mark includes non-English words.
- The mark includes non-Latin characters.
- The mark includes the name or portrait of a living person.
- The mark is currently in use and the applicant needs to limit use to a specific geographic area and identify the other concurrent users.