1. Make it clear why it was rejected.
Overview:
What are the common reasons for refusal of US trademark registration? Generally, the most common reasons for rejection are as follows. A registered trademark describes the goods and services for which registration is sought, which is a common valid ground for refusing registration. The similarity of a registered trademark to an existing registered trademark or a previously pending trademark application is the most common and the most serious reason for refusal of registration. A registered trademark is a personal surname. A registered trademark is a common name for goods or services. A registered trademark has a geographical description or an incorrect geographical description. It cannot be used as a trademark for goods or services due to lack of distinctiveness. Trademarks falling within prohibited provisions of trademark law, such as trademarks consisting of foreign flags or emblems or consisting of immoral, deceptive or defamatory elements.
Details:
Original title: Things to note when applying for a U.S. trademark
With the development of international economic integration, many domestic companies have promoted goods/services. For overseas markets, the registration and protection of overseas trademarks are particularly important. As a developed economy in the world, the United States has busy trade and unlimited business opportunities, making it the first choice for domestic merchants to expand overseas markets. This article mainly starts from the US trademark application system and briefly outlines some common application precautions, hoping to minimize the application risks.
(1) Basics of trademark application. The United States adopts the "first-to-use" doctrine. That is, the acquisition of trademark rights is based on the actual commercial use of the trademark, and the trademark registration certificate serves as a preliminary evidence of rights. Therefore, applicants should not only ensure the actual commercial use of the trademark to obtain trademark rights, but also register in a timely manner to consolidate rights. The application bases for U.S. trademarks are roughly divided into the following three types:
1. "Actual use": This method is mainly applicable to situations where the applied trademark has been used in the United States, and proof of use must be submitted when submitting the application. In order to save procedures and costs, many domestic applicants currently use this method, but applicants who do not actually use it need to bear integrity risks.
2. "Intention to use": This method is mainly applicable to situations where the applied trademark is intended to be used in the United States. The relevant proof of use can be submitted within 6 months after the initial authorization, and can be extended for 6 months each time , no more than 3 years and subject to additional fees.
3. "Domestic basis": This method is mainly applicable to situations where the applied trademark has been registered or applied for in China. The applicant can submit a trademark application to the United States based on the domestic registration or application. However, the application must be consistent with the domestic basis.
(2) Distinguish between "main book" and "deputy book". This is very similar to the trademark registration register in the United Kingdom and some Commonwealth countries that is divided into parts a and b. Some trademarks that lack distinctiveness and secondary meaning, but can still distinguish the applicant's goods or services, can be registered in the "Supplementary Book". Trademarks in the "Supplementary Book" have been registered for five consecutive years (if used extensively, this may be considered as appropriate) (Considering this period), if the use proves its significance, it may be promoted from the "auxiliary book" to the "main book". Such regulations prevent some trademarks that have been put into commercial use from giving up trademark registration due to lack of distinctiveness and losing long-established goodwill. This can also be regarded as a relief for applicants. In addition, for some trademarks that have been rejected due to lack of distinctiveness, they can also maintain their registration by applying for conversion to "auxiliary register" registration, and then apply for conversion to "main register" after they have acquired distinctiveness through continuous use for more than five years. "Book" registration.
(3) Registration at federal and state levels. In the United States, trademark users can choose to register their trademarks federally or in the state where business occurs. In addition to federal trademark laws, every state in the United States has trademark legislative power and has "state-level registration rights" for trademarks, and has state-level trademark registration rights. level registration authority. However, no state trademark office has the right to accept trademark registration applications from foreigners. Even if the scope of foreigners' trading activities in the United States is limited to only one state, they can only apply to the Federal Patent and Trademark Office to obtain trademark registration.
(4) Commodity classification is more detailed. Although the United States follows the international Nice Classification, its goods and service items are often more detailed than those in the Nice Classification.
For example, the product "computer peripherals" is a standard product item in the Nice Classification, but this product cannot be accepted in the United States because the scope of the product "computer peripherals" is too broad and not specific. If you want to be accepted by the USPTO, you must specify "keyboard, mouse, modem, scanner, printer, etc." In addition, although the United States does not limit the number of designated goods or services for each category, since the United States advocates the "use" principle, applicants must limit the selection of goods/services to goods that are actually produced and sold or services provided. You must not think that the more goods you submit, the broader the scope of trademark protection, and thus select some services that are not produced, sold or provided at all. Doing so is likely to lead to the cancellation of the entire trademark.
(5) The components of a trademark are broad. According to Section 45 of the Lanham Act, trade marks, service marks, collective marks, and certification marks may consist of "words, surnames, symbols, designs, or a combination thereof." Among them, the words and expressions such as "symbol" and "design" are relatively abstract, but at the same time they are given rich and extensive connotations. The elements that can be registered in a U.S. trademark application include text, graphics, color, sound, smell, appearance design, product packaging, three-dimensionality and their combinations, etc.
(6) Maintenance and renewal after registration. According to Article 8 of the U.S. Trademark Law, a successfully registered trademark must submit a certificate of use to the U.S. Patent and Trademark Office within 5-6 years from the date of registration to maintain the validity of the registered trademark. If a registered trademark is not used for special reasons, the reasons should be explained and the use of the trademark should be stated, otherwise the trademark will be revoked. At the same time, if the registrant has used its registered trademark in the United States for five consecutive years from the date of trademark registration, it can obtain "indisputable" rights through application. Once the "indisputable" right is obtained, the registrant has conclusive evidence of the exclusive right to use its trademark in trade, and any third party can no longer request the cancellation of the trademark registration on the grounds that the trademark lacks distinctiveness. In addition, U.S. registered trademarks are valid for 10 years. Proof of use or reasons for non-use must still be submitted for each renewal. Otherwise, the U.S. Patent and Trademark Office will revoke the trademark registration.
Case:
Original title: Things to note when applying for a U.S. trademark
With the development of international economic integration, many domestic companies have promoted goods/services. For overseas markets, the registration and protection of overseas trademarks are particularly important. As a developed economy in the world, the United States has busy trade and unlimited business opportunities, making it the first choice for domestic merchants to expand overseas markets. This article mainly starts from the US trademark application system and briefly outlines some common application precautions, hoping to minimize the application risks.
(1) Basics of trademark application. The United States adopts the "first-to-use" doctrine. That is, the acquisition of trademark rights is based on the actual commercial use of the trademark, and the trademark registration certificate serves as a preliminary evidence of rights. Therefore, applicants should not only ensure the actual commercial use of the trademark to obtain trademark rights, but also register in a timely manner to consolidate rights. The application bases for U.S. trademarks are roughly divided into the following three types:
1. "Actual use": This method is mainly applicable to situations where the applied trademark has been used in the United States, and proof of use must be submitted when submitting the application. In order to save procedures and costs, many domestic applicants currently use this method, but applicants who do not actually use it need to bear integrity risks.
2. "Intention to use": This method is mainly applicable to situations where the applied trademark is intended to be used in the United States. The relevant proof of use can be submitted within 6 months after the initial authorization, and can be extended for 6 months each time , no more than 3 years and subject to additional fees.
3. "Domestic basis": This method is mainly applicable to situations where the applied trademark has been registered or applied for in China. The applicant can submit a trademark application to the United States based on the domestic registration or application. However, the application must be consistent with the domestic basis.
(2) Distinguish between "main book" and "deputy book". This is very similar to the trademark registration register in the United Kingdom and some Commonwealth countries that is divided into parts a and b.
Some trademarks that lack distinctiveness and secondary meaning, but can still distinguish the applicant's goods or services, can be registered in the "Supplementary Book". Trademarks in the "Supplementary Book" have been registered for five consecutive years (if used extensively, this may be considered as appropriate) (Considering this period), if the use proves its significance, it may be promoted from the "auxiliary book" to the "main book". Such regulations prevent some trademarks that have been put into commercial use from giving up trademark registration due to lack of distinctiveness and losing long-established goodwill. This can also be regarded as a relief for applicants. In addition, for some trademarks that have been rejected due to lack of distinctiveness, they can also maintain their registration by applying for conversion to "auxiliary register" registration, and then apply for conversion to "main register" after they have acquired distinctiveness through continuous use for more than five years. "Book" registration.
(3) Registration at federal and state levels. In the United States, trademark users can choose to register their trademarks federally or in the state where business occurs. In addition to federal trademark laws, every state in the United States has trademark legislative power and has "state-level registration rights" for trademarks, and has state-level trademark registration rights. level registration authority. However, no state trademark office has the right to accept trademark registration applications from foreigners. Even if the scope of foreigners' trading activities in the United States is limited to only one state, they can only apply to the Federal Patent and Trademark Office to obtain trademark registration.
(4) Commodity classification is more detailed. Although the United States follows the international Nice Classification, its goods and service items are often more detailed than those in the Nice Classification. For example, the product "computer peripherals" is a standard product item in the Nice Classification, but this product cannot be accepted in the United States because the scope of the product "computer peripherals" is too broad and not specific. If you want to be accepted by the USPTO, you must specify "keyboard, mouse, modem, scanner, printer, etc." In addition, although the United States does not limit the number of designated goods or services for each category, since the United States advocates the "use" principle, applicants must limit the selection of goods/services to goods that are actually produced and sold or services provided. You must not think that the more goods you submit, the broader the scope of trademark protection, and thus select some services that are not produced, sold or provided at all. Doing so is likely to lead to the cancellation of the entire trademark.
(5) The components of a trademark are broad. According to Section 45 of the Lanham Act, trade marks, service marks, collective marks, and certification marks may consist of "words, surnames, symbols, designs, or a combination thereof." Among them, the words and expressions such as "symbol" and "design" are relatively abstract, but at the same time they are given rich and extensive connotations. The elements that can be registered in a U.S. trademark application include text, graphics, color, sound, smell, appearance design, product packaging, three-dimensionality and their combinations, etc.
(6) Maintenance and renewal after registration. According to Article 8 of the U.S. Trademark Law, a successfully registered trademark must submit a certificate of use to the U.S. Patent and Trademark Office within 5-6 years from the date of registration to maintain the validity of the registered trademark. If a registered trademark is not used for special reasons, the reasons should be explained and the use of the trademark should be stated, otherwise the trademark will be revoked. At the same time, if the registrant has used its registered trademark in the United States for five consecutive years from the date of trademark registration, it can obtain "indisputable" rights through application. Once the "indisputable" right is obtained, the registrant has conclusive evidence of the exclusive right to use its trademark in trade, and any third party can no longer request the cancellation of the trademark registration on the grounds that the trademark lacks distinctiveness. In addition, U.S. registered trademarks are valid for 10 years. Proof of use or reasons for non-use must still be submitted for each renewal. Otherwise, the U.S. Patent and Trademark Office will revoke the trademark registration.
2. Find out the reason for rejection and correct the application
Case:
Trademark name:
MY HOTEL
p>Category: Class 43
Client: Changzhi Maihe Hotel Co., Ltd.
Case type: Trademark rejection review
Reasons for rejection by the Trademark Office : (1) This trademark is similar to the Maihe trademark No. 4845222 registered by Zhang Weicai 372801197405287415 for similar services. (See Issue 1152/1164 "Trademark Announcement")
(2) This trademark is the same as Maihejia (Beijing) Catering Chain Management Co., Ltd.'s registered No. 9171766 on similar service projects The trademark of the hometown restaurant is similar. (See Issue 1324/1336 of "Trademark Announcement")
(3) The trademark is similar to the My Inn trademark No. 4857460 registered by My Travel Agency Co., Ltd. for similar services. (See Issue 1194/1206 "Trademark Announcement")
(4) This trademark is similar to my trademark No. 3112408 that Wang Yaping has registered for similar services. (See Issue 886/898 "Trademark Announcement")
Processing background introduction: The reason why I introduce this trademark to you is because when we initially applied, we already knew that the trademark would definitely be rejected by the Trademark Office. , but because the customer liked the trademark very much, we formulated a corresponding follow-up treatment strategy, and after analyzing the feasibility and related costs, we received the customer's support and were able to implement the plan. After the trademark was rejected by the Trademark Office, we immediately launched the review plan we had formulated at that time. On November 21, 2014, we received full support from the Trademark Review and Adjudication Board and approved the registration of the trademark.
Sometimes when a trademark is not going well, you may encounter some difficulties, but we can foresee and solve these difficulties in advance, but such a trademark may take more time than ordinary applications. If we have sufficient communication between the agent and the customer in advance and arrange the handling strategy in advance, we will be able to deal with it calmly when we encounter problems.