Trade Mark Registration Certificate Translation for the USA

The USPTO and a use-based system

What sets the US trade mark system apart is that protection is tied largely to use of the mark in commerce; an application usually rests either on actual use in commerce or on an intent to use, and a specimen showing that the mark is being used is called for. A Turkish registration certificate is in most cases put forward in a US application as a priority claim under the Paris Convention or as a basic registration. Translating the certificate allows the USPTO examiner to read the mark, its proprietor and its scope correctly; evidence of use is a separate matter and is not to be conflated with the translation of the certificate.

The registration number and the filing and protection dates on the certificate must match the data of the basic mark; these are numerical identity and are carried across without being translated. Where priority is claimed, transferring the priority date and its basis correctly forestalls any argument about the date from which the mark has been protected.

Another way into the USA is an international registration made through WIPO under the Madrid Protocol and designating the USA; on that route too, the USPTO applies its own rules on use and on formal requirements. Nor is a registration secured once and for all: at set intervals, declarations and specimens showing that the mark is in use have to be filed. These maintenance steps are not the subject of the translation, but the translated Turkish registration certificate keeps the identity and scope of the mark fixed and legible throughout the process. The proceeding the document is destined for – registration, maintenance or a dispute – also shapes the scope of the translation.

The Nice classification and the list of goods and services

The USPTO assesses goods and services according to the Nice classification; the office does, however, set particular store by a list that is specific and clearly defined, and it may refuse wording that is too broad or too vague. In translation the list of goods and services is carried across exactly and in full; what is protected is determined not by the class heading but by the concrete items enumerated under that class. Shortening the list, or making do with the heading, misstates the scope of protection – and a word choice in English that shifts the coverage of a single item has the same effect.

Nice class numbers are kept as they stand and in the same order. The type of mark (word, figurative, composite) and the proprietor’s name and address are carried across in full as identifying data; they are what ties the USPTO record to the Turkish registration. Where the same mark is protected in several countries, the lists of goods and services prepared for each of them are expected to agree with one another; an item worded differently in one list weakens the impression that the various protections rest on the same mark.

The sign itself is not translated

A trade mark is a sign, and a sign is not translated: a word mark is left as it stands, while a figurative element or logo is described inside square brackets. Rendering a mark into English according to its meaning turns the protected sign into an altogether different one and makes the document unusable. If the sign does carry a meaning, that meaning is given as an explanatory note rather than as a translation, and only where it is needed; the mark itself is carried across in the form it takes in the source. Because the USPTO record is kept in English, staying measured and consistent wherever explanation is called for helps the examiner identify the sign correctly.

• Keep the list of goods and services complete and specific; do not settle for the heading.
• Do not translate the word mark; leave the sign in the form it takes in the source.
• Check that the certificate of accuracy has been attached to the translation.

Certification: the signed certificate of accuracy

The USA has no sworn translator system; a translation of a foreign document filed with the USPTO, or produced before a court in a dispute, usually carries a signed certificate of accuracy instead. In the registration proceeding what counts is the accuracy of the translation and the precision of the list of goods and services; in licensing, customs or litigation matters, notarisation and an apostille may arise alongside the certificate. The USA is a party to the Hague Apostille Convention; if an apostille is required, confirm the current position from the official HCCH list. You can handle the process through our single office in Ankara Kızılay, see the cost on our pricing page and request a quotation by uploading your document. This page is for general information; for registration strategy, consult your trade mark attorney.