The US trademark is under the jurisdiction of the United States Patent and Trademark Office, USPTO. It is different from most countries and adopts a "first to use" system. Therefore, evidence of trademark use is a very important part of the application process.
There are two types of US trademark applications
➤Trademark has been actually used
Applying for trademark registration on the basis of actual use is most beneficial to the applicant. The advantage is that the cost is cheaper, the time is shorter, and the registration is relatively easy.
➤ Intent to use of trademark
When the applicant filed the application, he didn't actually use the trademark in the country where the application was made, but prepared to use it after a period of time. On this basis, the cost will be higher, the examination time is longer, and the examination standards are stricter.
After approval, there is one more procedure based on actual use. After the substantive examination was passed, the applicant would obtain a trademark registration certificate when his trademark is actually used locally, provide evidence of actual use, and must sign an affidavit of use.
01. Ways to apply for a US trademark
1. Single country application
2. Apply through the Madrid trademark
02. Materials required for filing of trademark application in US
Individual application: ID card copy with front and back.
※ Proof of use: including the date of first use in the United States, the date and country of the first use of the trademark.
03. US trademark application time
About 12-18 months.
04. US trademark application process
1. Application
After submitting the required documents and fees, applicants will get an application receipt within about 1 week.
2. Formal and Substantive examination
During the review period of about 3 months, the reviewer will review the submitted documents for errors and whether they are unregistrable reasons to be registered. Within 6 months of issuing the notice, applicants must reply or make corrections.
Failure to make corrections or reply after the due date is deemed to have been abandoned.
3. Announcement
After passing the substantive review, an announcement notice will be issued and a three-month announcement will be made at Office Gazette. Anyone can file an opposition procedure against the trademark during the announcement period, and the opposition period is within 30 days from the announcement date.
4. Registration
During the announcement, no one raised any objection to the trademark, the official will issue an approval notice. The certificate can be obtained in about 3-6 months. During this period, applicants who apply for "Intent to use" should submit proof of use within 6 months after issuing the approval notice. The certificate will be obtained about 3- 6 months after the review is passed.
※Notices:
1. The US Trademark Law stipulates that in the fifth year from the first registration date, the trademark owner must file an affidavit and use evidence to maintain the registration of the trademark.
2. A trademark registration is valid for 10 years form the date of application and could be renewed for 10 years before the expiry date. The renewed date starts from the 6 months before expiration and is graced to within 6 months after the expiration. No need to provide proof of use for renewed.
3. After the trademark registration has not been used for three consecutive years, anyone can propose "abolition" of the trademark, so that the trademark registration is revoked.
05. Madrid trademark application process
1. After the applicant submits the application to the original country, the intellectual property bureau of the original country submits the application to WIPO for examination.
※Because Taiwan isn't an agreement or negotiated country for Madrid trademarks, Taiwan companies or individuals who want to apply for Madrid trademarks need to have the trademark of one of the Madrid Agreement countries as the basic case (usually based on China) before applying.
※Notice: if the basic case is rejected, Madrid trademark registration cannot register.
2. If the application meets the requirements, WIPO will register the trademark in the international register book and publish it. Then, WIPO will notify the office of each designated Party for examination. Generally speaking, since US receives the application, the time required for registration is 18 months (Protocol Relating to the Madrid Agreement). The international trademark right is valid for 10 years.
