The United States (US) is one of the few countries in the world requiring trade mark owners periodically file declarations proving use of their trade mark in trade in the US, for the goods or services covered by their trade mark.
Failure to prove use results in the loss of registered rights. Why? The aim is to ensure the integrity of the US Federal Trade Marks Register – no trade mark squatters allowed!
What does this mean for you?
The strict approach of the US trade marks office is notorious and needs to be navigated carefully when assessing how best to protect your trade mark in the US.
Filing trade mark applications too broadly can jeopardise your rights, and even result in allegations of fraud, in the US. Added to this, the US Patents & Trade Marks Office (USPTO) periodically conducts audits of the trade mark declarations filed – further increasing costs.
Since 2017, the US audit process has been random. These random audits have impacted Australian and New Zealand businesses in the US across the board. However, nothing is certain but change. The good news is that, on this occasion, the change looks to be welcome.
The USPTO has announced that it will begin adopting a more targeted approach to the trade mark audit process, focusing on registrations and exhibits that call into question whether the mark is being used in the US in the ordinary course of trade for all of the registered goods and services there.
So, for New Zealand and Australian businesses expanding into the US market, what should you do?
Our attorneys have a range of tools at hand to help you navigate the pitfalls and perils of filing in the US. We’ll work with you to push out the US proof of use requirements as far as possible.
Working closely with your trade mark attorney, and carefully assessing your trade mark filing strategy before committing to your US application, will help keep those dreaded extra costs at bay.
If you would like to discuss your trade mark protection in the US, please get in touch with one of our experts.
