Currently, many companies have a need to apply for U.S. trademarks. We will share some basic knowledge about U.S. trademark applications (also known as trademark registration). In the past, from a cost-saving perspective, some Chinese companies chose to learn and try to register U.S. trademarks themselves. However, be aware that as of August 3, 2019 [1], the United States Patent and Trademark Office (USPTO) requires non-U.S. trademark applicants, registrants, and parties to trademark trial and appeal board proceedings to be represented by attorneys licensed to practice in the U.S. in handling trademark matters (including trademark applications, appeals of refusals, oppositions, etc.). This means that to register a U.S. trademark now, you must find an attorney licensed to practice in the U.S. So, what is the process for registering a U.S. trademark?

I. Registration Application Basics

When submitting a trademark application in the United States, an important issue is choosing the trademark's filing basis, also known as the Filing Basis. Here are several common filing bases [2]:

Section 1(a) - Actual Use in Commerce: Applicants who have actually used the trademark in U.S. commerce and intend to continue doing so may opt for this application method. When choosing 1(a) as the basis for the application, applicants must submit evidence of the actual use of the trademark and the duration of use in the U.S. at the time of filing the application. The advantage of this application basis is that no additional use evidence needs to be submitted during the application process, which can expedite the entire timeline of the U.S. trademark application.

Section 1(b) - Intent to Use

Applicants who have not yet begun using the trademark in the U.S. but plan to do so can choose this application method. Trademark applications based on Section 1(b) will receive a NOTICE OF ALLOWANCE from the examiner upon completion of the trademark approval announcement. This notice requires the applicant to submit evidence of actual use in the U.S. and a declaration of use within six months. If the applicant is unable to submit the trademark use evidence within the 6-month period, they can apply for a six-month extension, up to five times in total (resulting in a total of three years). This application method is a preferable choice for businesses that have not yet launched their trademark in the U.S. market before entering the American market.

Section 44(d) - Foreign Application

If the applicant has already filed the trademark in a foreign country (but not yet registered), they can use this as a basis to submit a registration application for the same trademark to the United States Patent and Trademark Office. If the filing date in the foreign country is within 6 months, priority can be claimed. Note that for applications based on this prior filing, the information in the trademark application must match the foreign filing.
Section 44(e) - Foreign Registration (Foreign Registration): This application basis is similar to 44(d), where if a trademark applied for in another country has been registered, an applicant can submit an application in the U.S. at any time and use this as the application basis. The major benefit and convenience of this application basis is that the applicant does not need to provide evidence of use of the trademark in the U.S. As with 44(d), the goods or services covered by the U.S. application must match those listed on the foreign trademark registration certificate.

Section II: Prepare Documents for U.S. Application Registration

If applying for a word trademark (English), only the text content is required.

2. If applying for a graphic trademark, prepare a clear illustration of the trademark (preferably in jpg format if electronic); if the trademark is colored, specify the colors. Once registered, the trademark colors cannot be changed, with the colors as the standard; however, if the trademark is black and white, any color can be adopted in its subsequent use.

3. Specify the category of the trademark and identify the goods or services to be registered, along with a description of such goods or services. The description of goods or services can be a complex issue, and should be viewed in conjunction with Section 7 "Official Fees Related to Trademark Registration." Briefly, if the TEAS Reduced Fee Form is used, the applicant can provide their own description of the goods or services; if the TEAS Plus Form is used, the applicant can only select from the USPTO's Goods/Services Description Manual [3].

4. If utilizing the aforementioned 44(d) or 44(e) application basis, provide relevant documentation of your domestic trademark application or registration.

5. If using the aforementioned 1(a) as the basis, please provide the date of initial use in the U.S. and evidence.

6. In certain cases, a usage declaration must be submitted, stating that the trademark is continuously used in commerce on the goods, or declaring that the registrant has not used the trademark due to other special reasons, and that such non-use does not constitute a waiver of the trademark; otherwise, the United States Patent and Trademark Office will cancel the trademark registration.

III. Submission of U.S. Trademark Application

After submitting an application to the United States Patent and Trademark Office, an application number will be assigned; if submitted electronically, the number will be immediately received upon submission; approximately two weeks after the application number is assigned, the information about the trademark can be found on the USPTO website.

IV. US Trademark Application Review

After the trademark application is submitted in the United States, examiners will conduct both formal and substantial reviews. The formal review mainly checks if the application content and classification information comply with relevant regulations. The substantial review covers aspects such as trademark distinctiveness, non-violation of prohibitive clauses, and similarity to prior trademarks. Examiners will issue an Office Action addressing any legal issues not yet clarified or explained by the applicant. This Office Action must be responded to within 6 months; failure to do so is considered a withdrawal of the application. Applications that pass the review smoothly or have their responses accepted by the examiner will be announced.

V. U.S. Trademark Registration公告

After the U.S. trademark examination is approved, the trademark application will be published online (The Official Gazette, OG) for a 30-day period. During this announcement phase, any interested party or prior right holder may file an objection with the United States Patent and Trademark Office; if there are no objections or if the objections are not valid, the registration process will proceed.

Section 6: Registration and Documentation

If no objections are raised, applications based on "actual use" typically receive registration and the Trademark Registration Certificate within 3 months of the announcement. For applications based on "intent to use," the United States Patent and Trademark Office usually issues a Notice of Allowance within 8 weeks. Within 6 months from the date of receiving this notice, the applicant must file a Statement of Use and evidence of use with the United States Patent and Trademark Office.

In most cases, at least one product or service must be selected from each category, accompanied by at least 2-3 evidence photos or sample images. The applicant must also sign the "Use Declaration." If the applicant has not used the trademark application in practice, they may request a maximum of 5 extensions, making the total period from the date of the approval notice 36 months. Each extension application requires payment of the extension official fee per category. Use declarations and evidence that pass the review will receive a trademark registration certificate issued by the United States Patent and Trademark Office.

Section 7: Official Fees Related to Trademark Registration

Section 8: Trademark Expiration Period

The validity of a U.S. trademark is 10 years from the date of registration. A renewal can be processed up to 12 months before expiration. If not renewed within this period, a 6-month grace period is allowed, but an additional $100 fee is required. Additionally, during the 9th and 10th years from the registration date, a renewal application must be submitted along with a declaration of use and evidence of use, stating that the trademark is continuously used on the registered goods/services. The renewal period is also 10 years and can be renewed indefinitely. This is a brief introduction to the application of U.S. trademarks. Furthermore, it is recommended that individuals or companies interested in applying for a U.S. patent conduct a preliminary search of their trademark first. If they find a trademark very similar to theirs, they should make certain adjustments to the trademark in advance to reduce the risk of rejection later on.

Conclusion: Currently, trademark registration applications must be submitted by a U.S. attorney, which has somewhat increased the difficulty and threshold for registering a trademark in the U.S. For more information on U.S. trademark applications, please feel free to contact us at any time!