U.S. Trademark Introduction
Trademark protection rule
U.S.’s trademark law follows the “First-to-use” rule, which indicates that protection will be given to the trademark that was used earlier if there are two or more similar trademark applications in the same class. Noted that the applicant should have used the trademark or declare his/her intention for using the trademark before registration.
Under the principle of territoriality, trademark could only be protected in registered regions. Hence, protection is legally valid and limited only within U.S. if the applicants register his/her trademark there, and vice versa. Businesses that fail to register their trademark in U.S. will have very limited legal protection in U.S. against trademark infringement. Corporation should apply overseas trademark if they want to expand their business, so as to avoid the infringement of trademark against or by a third party.
Renewal of registration
The protection period of trademark is 10 years beginning from the registration date, and can be renewed every 10 years. Trademark owner must file the Declaration of Use (DAU) and/or Extension of Time to file DAU between the 5th and 6th years upon the registration date, and file it again with an Application for Renewal when renewing the registration in the 9th and 10th year. Trademark owner can renew his/her trademark 12 months before the due date.
Noted that trademark will be removed from registration if applicants do not apply for renewals of registration within a specific period.
U.S. Trademark Application Procedure
Application procedure normally takes 7 – 10 months, with 30 days of publication for opposition after registration.
Below is the procedure of applying U.S. trademark,
U.S. Trademark FAQ
U.S. Trademark Application
Q1：What are the requirements if I want to apply U.S. trademark?
A1： Applicant should meet one of the following requirements:
(1) Trademark that has been used：Applicant has to submit the application with the statement of use together. Trademark registration certificate will be issued after the approval of the statement of use as well as the substantive examination.
(2) Intention to use of the trademark：Applicant does not need to submit the statement of use during together with the application. However, he/she has to submit the evidence of use of trademark within 6 months after the notification of registration. Otherwise, he/she might seek to apply for extension of time to submit the evidence or the trademark registration will not be granted.
Q2：What do I need when I apply the trademark?
1. Application form：Should clearly state the basic information of applicants, including but not limited to name, address, nationality etc.
2. Classes of goods and services applied
4. Copies of ID documents (Individual application) / BR certificate (Corporation application)
5a. Statement of Use OR
5b. Trademark registration certificate (true copy) from the country of domicile of the applicant as an alternative of Statement of Use.
Q3：What can I submit for statement of use?
A3：Evidence of use in product industries and service industries are different
Products：(1) trademark printed on the product or its label, (2)contracts for product sales and (3)product package etc.
Services： Use of trademark in (1) advertisement, (2) related webpage and (3) services manual etc.
U.S. Trademark Objection
Q3：What should I do if the trademark is objected by USPTO?
A3： Applicant should submit a written argument to USPTO within 6 months from the receipt of notification, against a notification of reasons for refusal. JPO will made the decision of refusal if applicant does not submit any argument. Should you have any inquiries about appealing examination, please feel free to contact our IP consultant anytime.
Q4：How much for appealing examination?
A4：Appealing fee varies based on the case situation. Should you have any inquiries about appealing examination, please feel free to contact our IP consultant anytime.
U.S. Trademark Opposition
Q3：What should I do if my trademark is opposed by a third party?
A3：Overseas applicants can submit a written argument within 40 days from the notification of reasons for revocation. Should you have any inquiries about trademark opposition or procedure, please feel free to contact our IP consultant.
Q4：What if I do not submit written argument toUSPTO when my trademark is opposed by a third party?
A4：Applicant will be treated as withdrawal of application if he/she does not submit the materials to USPTO within specific periods. USPTO will make the decision of revocation then.