How to apply for a US trademark

1. The United States is a country that implements case law (i.e., unwritten law). Therefore, court precedents play an important role in handling trademark disputes and the development of trademark law in the United States.

2. The United States adopts the first-to-use trademark protection principle. Ownership of a trademark in the United States generally depends on use of the mark in the United States. Generally speaking, even if the first user has never registered its trademark in the United States or a later user has registered an identical or similar trademark first, the first person to actually use a trademark has better rights than the later user of the trademark. Of course, from the perspective of trademark protection, the registration of the user's trademark with the U.S. Patent and Trademark Office cannot be ignored.

3. According to the currently applicable trademark registration regulations in the United States, commodity trademarks, service marks, collective marks and certification marks can be registered in the United States.

4. The United States adopts the International Classification of Goods and Services. Trademark registration is divided into a main book and a supplementary book.

5. The international organizations and international conventions that the United States participates in include: World Intellectual Property Organization, the Paris Convention for the Protection of Industrial Property, the Nice Agreement on the International Classification of Trademark Registers and Services, and the Protocol to the Madrid Agreement.

The main difference between the U.S. trademark system and other countries in the world is that the exclusive right to use U.S. trademarks is based on the first-to-use principle.

Applicants can apply for registration in the United States based on the following four conditions:

1. Actual use of the trademark (Trademark Specimens)

The trademark applied for registration must have been When applying for actual commercial use in the United States, the application can only be filed for goods or services for which the trademark has been actually used; for applications filed on this basis, after review, in about 12 months, the USPTO will announce that within 30 days If there is no objection within the objection period, the USPTO will issue a registration certificate 12 weeks after the announcement.

2. Intention to use the trademark

a) The trademark applied for registration must be intended to be used in the United States. When filing the application, the applicant must submit a statement of sincere use of the trademark and explain where it will be used. Use relevant trademarks on products or services.

b) After review, announcement and objection procedures, the USPTO will issue a “notice of allowance” instead of a registration certificate. (The time is approximately 12 months)

c) Within six months after the issuance of the "Notice of Allowance", the applicant must provide a statement of genuine use of the trademark in commerce, or seek an extension; the USPTO can The applicant's extension application gives the applicant another 6 months to submit a statement of true use.

d) If the application has valid reasons, you can apply for an extension for another 6 months; if the reason is established, the extension period can be up to 24 months. In this way, the applicant has 36 months from the date of receipt of the "Notice of Allowance" to submit a statement of true use to the USPTO. Therefore, it takes the applicant approximately four years from filing an application to putting the relevant trademark into actual commercial use.

e) The USPTO will conduct another review after receiving the statement of true use. A registration certificate will be issued only if the declaration of genuine use is accepted upon review. The exclusive right to use a trademark is calculated from the date of application.

3. Domestic registered trademarks

If the trademark applied for registration has been registered in China, it can be registered in the United States on this basis, and the design, goods and services of the trademark applied for in the United States The scope of the trademark must be the same as that of the domestically registered trademark. When applying, a certified copy of the domestic trademark registration certificate and a sworn English translation must be provided. The USPTO will issue the trademark registration certificate after review and confirm that there are no objections. The time is generally 15 days moon.

4. Based on the domestic application

According to the provisions of the Paris Convention, Chinese applicants can apply to the United States based on the priority of the domestic application within 6 months from the date of submission of the domestic application. When filing an application, the domestic filing date shall be regarded as the U.S. filing date. Based on this article, you have to wait until the trademark is successfully registered in China and submit the corresponding registration certificate to the USPTO before you can be issued a registration certificate; if the trademark fails to be successfully registered in China, the trademark will be revoked. Therefore, choosing this basis is risky and is rarely used in practice.

USPTO trademark registration is valid for ten years and can be renewed after ten years, but the applicant needs to provide an affidavit indicating the continued existence of the application during the fifth to sixth years; later , the trademark registrant should also submit a trademark use statement again every 10 years after trademark registration, and there is a 6-month grace period. After the trademark is registered with the USPTO, if the trademark has been used continuously within 5 years and has not been disputed or the dispute cannot be established, the trademark rights are deemed to be permanently established and the trademark becomes an "undisputed trademark". Only when the trademark is successfully registered with the USPTO can the R plus ring mark be used. If the trademark owner wants to sue others for infringement in the future, then the failure to indicate trademark ownership on the trademark will become a disadvantage to the trademark owner. .

Information required for U.S. trademark application:

1. If applying as a legal person, attach a copy of the "Business License" or valid registration certificate with an official seal; if applying as a natural person, attach an individual identity 1 copy of supporting documents;

2. Applicant’s detailed information (in Chinese and English), including name, nature, nationality, detailed address, postal code, and contact information;

3. Electronic version of the trademark sample;

4. Product name and category;

5. The applicant submits a statement of sincere use of the trademark and explains on what products or services the relevant trademark will be used. (Intended use);

6. The applicant provides a statement of true use of the trademark in business (actual use);

7. Signed power of attorney.

U.S. trademark registration and application procedures

1. Applicant qualifications:

(1) Those who have used trademarks in U.S. commerce can apply for trademark registration.

(2) According to the Trademark Amendment Act of 1988, a person who sincerely intends to use the trademark in U.S. commerce may also apply for trademark registration.

(3) If the trademark of a national of a member state of the Paris Convention has been registered in its own country, although it has not yet been used in business activities with the United States, it has been used in other countries or intends to use it in accordance with the 1988 revised law. A person who owns a trademark can apply for trademark registration. Foreign applicants must designate an agent in the United States to handle trademark matters.

2. Application process (smooth situation):

(1) Formal review: After the application is submitted, the legality review of the submitted application documents, trademark drawings, power of attorney and other documents will be carried out ; If the regulations are met, the application date and application number will be awarded.

(2) Substantive examination: Examine whether the trademark is registrable in accordance with the law, whether it is identical or similar to a previously registered trademark, and whether it violates the prohibition provisions of the trademark law. For a trademark that fails substantive examination, the examining officer will notify the applicant in writing and inform the applicant of the reasons for rejection. The applicant may submit a reexamination within the time limit from the date of receipt of the rejection notice. Otherwise, the application will be deemed abandoned, and the application date and application number will not be retained.

(3) Announcement: After review, if the examining officer believes that the trademark application can be accepted, an announcement will be published on the official U.S. Trademark Gazette. The objection period is one month from the date of announcement.

(4) Submit a statement of use: After the above procedures, the Trademark and Patent Office issues a "notice of allowance" (a notice of allowance), non-registration certificate; within 6 months after issuing the "notice of allowance", Applicants must provide a statement of genuine use of the trademark in commerce, or apply for a reserved trademark.

(5) Registration approval: After receiving the statement of true use, the Trademark and Patent Office will review it again. If upon review it is decided to accept the statement of genuine use, a registration certificate is issued. The entire smooth application process (if there are no rejections, objections, etc.) takes about 20-24 months.

3. Validity period: 10 years from the registration date. If you need to continue to use it after the registration validity period expires, you should apply for registration renewal 6 months before the registration validity period expires. Each renewal registration is valid for 10 years. Between the 5th and 6th years after the trademark registration, and between the 9th and 10th years after the trademark registration, the trademark registration must submit to the USPTO a signed Section 8 Affidavit stating that the trademark registration has been completed within 5 years after the trademark registration. The registered trademark is used on all trademarks and/or services approved by the registration, or on some of the goods and/or services approved, or indicates that there is no legitimate reason for using the registered trademark: such as temporary interruption of product sales due to government regulations The registration can be maintained valid or partially valid only if it is legitimately sold, or if the production of the product is temporarily interrupted due to fire or other disaster and not if the registrant intends to abandon the registered trademark.