1. Issues that need to be paid attention to when applying for a US trademark

(1) Trademark The US Patent and Trademark Office is very strict in reviewing trademarks, so applicants need to pay attention to the following for different types of trademarks. Question: 1. Chinese trademark applications can be submitted in the United States, but the applicant needs to provide the pronunciation of each Chinese character that constitutes the trademark and the corresponding English translation. 2. If the trademark consists of simple English letters, and these letters are not stylized, in order to protect the trademark more broadly, we usually recommend that the applicant declare that the trademark is a standard font (Standard Characters) when submitting the application. ), that is, no claim is made to protect any color, size, or font. The ordinary fonts mentioned here usually refer to TIMES NEW ROMAR or ARIAL. 3. If the trademark is in color, the color of each part must be specified. It is worth noting that if the mark is gray, the USPTO will consider the mark to be a color mark. 4. It must be clearly stated whether the trademark has special meaning in relevant business or trade, geographical description or other languages. In addition, the United States Patent and Trademark Office has very strict requirements for the trademark images provided. The trademark image must be clear without any blurry feeling. Since most U.S. trademark applications are submitted electronically, applicants need to provide trademark images in image format (such as jpg format). The U.S. Patent and Trademark Office also has requirements for the pixels in image format, which cannot be less than 250 pixels or greater than 944 pixels.

(2) Selection of goods/services Although the United States does not limit the number of goods/services submitted for application, since the United States advocates the "use" principle, applicants must be certain when selecting goods/services. It should be limited to goods that are actually produced and sold or services provided. Do not think that the more goods submitted, the wider the scope of trademark protection will be, and thus select some services that are not produced, sold or provided at all. Doing so will most likely result in the entire trademark being revoked. In addition, 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." We suggest that when selecting the goods/services to be applied for, the applicant can provide the common name of the goods/services in the industry, instead of rigidly following the goods/services provided in the "Classification Table of Similar Goods and Services" published by the China Trademark Office name to select.

(3) Basis for applying for a US trademark There are only three basis for applying for a US trademark. That is to say, only one of the three basics can be applied for a US trademark. 1. Submit an application based on actual use. Actual use means that the trademark has been used in the United States before the date of application. "Use" mainly means that products bearing the trademark have been sold in the U.S. market or have been advertised in the U.S. media. It is also worth noting that use refers to the use of all goods/services specified in the application, not partial use. If filing a U.S. application based on actual use, the applicant will need to provide evidence of trademark use (i.e., at least one photo of a product bearing the trademark per category), as well as dates of first use in the U.S. and in other countries around the world (need to be precise). to year and month) 2. Submit an application based on intent-to-use. Intention-to-use means that although the trademark has not yet been used in the United States when the application is submitted, the applicant bona fide (Bona Fide) plans to use the trademark in the United States soon. trademark. According to Section 1(d) of the U.S. Trademark Law, for a trademark application submitted based on intent to use, after the trademark passes the examination, within three years from the date of issuance of the Notice of Acceptance, A statement of use of the trademark in the United States must be submitted. Otherwise, the trademark application will be revoked.

3. Submit an application based on domestic registration (Home Registration). When submitting an application in the United States based on this domestic registration, you need to pay attention to the following points: First, the trademark obtained domestic registration must be exactly the same as the trademark intended to be registered in the United States, and there must be no Any minor changes; secondly, the scope of goods/services specified on the domestic registration certificate must be larger than the scope of goods/services to be applied for protection in the United States; thirdly, the name and address of the applicant must be consistent.

We have noticed that many US trademark registrations applied by Chinese companies or individuals are submitted based on actual use. However, in fact, only a small part of the trademarks are actually used in the United States, and the vast majority of applicants are only considering paving the way for future entry into the U.S. market. Therefore, as long as any third party presents strong evidence that one of the registered goods is not used in the United States and it is accepted by the U.S. Appellate Trial Board (TTAB), the registration will most likely be revoked in its entirety instead of deleting the unused items. Some items.

II. Issues that need to be paid attention to after trademark registration in the United States

1. Submit a statement of continued use of the trademark. Article 8(b) of the U.S. Trademark Law states that Article 12 of this law For a registered trademark to be announced under Article (c), the registrant shall submit a statement of use to the United States Patent and Trademark Office within one year before the expiration of the sixth year after registration (i.e., between the fifth and sixth years after trademark registration), stating that the trademark Continue to use the trademark on designated goods/services in commerce, or state that the registrant's non-use of the trademark is based on other special reasons, and such non-use does not mean abandonment of the trademark. Otherwise, upon the expiration of the sixth year from the date of publication of the registration, the USPTO will revoke the trademark registration. In practice, it is not difficult to find that many registrants do not pay attention to or attach importance to this provision, thinking that they only need to wait for renewal before the expiration of the 10-year validity period to maintain the validity of the trademark. As a result, a large number of U.S. registered trademarks have been revoked due to failure to submit proof of continued use in a timely manner.

2. The right of incontestability (Incontestability) The U.S. Trademark Law stipulates that if the trademark registrant has used its registered trademark in the United States for five consecutive years from the date of trademark registration, the registrant can obtain the right through application. Indisputable rights. An undisputed registration constitutes conclusive evidence that the registrant has the exclusive right to use his or her mark in trade. Furthermore, any third party can no longer request the US Appellate Board to revoke the trademark registration on the grounds that the trademark lacks distinctiveness. This provision is very meaningful for registrants who actually sell their products in the United States. However, in practice, few people make good use of this right to protect their registered trademarks and defend their rights.

3. Renewal The validity period of a registered trademark in the United States is 10 years, calculated from the date of registration. Within six months of the expiration date, the trademark owner may submit a renewal application to the USPTO. Different from other countries, when submitting a renewal application, the owner of a registered trademark still needs to submit a statement of use, stating that the trademark will continue to be used in commerce for designated goods/services, or stating that the registrant does not use the trademark based on other special reasons, and such non-use does not imply a waiver of the trademark. Otherwise, the USPTO will revoke the trademark registration. The U.S. trademark application registration process is relatively complicated. For Chinese companies or individuals who are preparing to apply for a trademark in the U.S., they need to carefully check the trademark to be applied for, select goods/services that meet the specifications, and adopt a suitable submission basis before submitting the application. Only in this way can they be as successful as possible. It is possible to avoid issuing review opinions during trademark review to ensure the smooth registration of trademarks; Chinese companies or individuals who have applied for a U.S. trademark or obtained a U.S. registered trademark need to pay attention and pay attention to the latest status of their trademarks in a timely manner to avoid trademark cancellation due to negligence. .