Application for the registration of trademarks in United States should submit application for registration to USPTO, the registration of trademark will be adopted the principle of “priority of use”. The basis of use is required upon the submitting of the application in U.S.A, mainly in three (3) types, the documents and notices are associated with three (3) types of basis are as follows:
I. On the Base of Intent-to-use
This basis is applied to the status that the trademark is not to be used in U.S.A upon the submitting of the application for registration. There is no need to present the use evidence of the trademark when the application is on the base of “intent-to-use”, the application for registration can be submitted directly. However, the evidence for use and the first time for use in America and the whole world will be required by the official notice after pass the review of trademark, in order to obtain the registration certificate of the trademark. The applicant will be allowed to extend to submit the statement of use if the trademark was not be put into use prior to the approval of registration. The trademark will be invalided if the evidence of use is failed to present.
II. On the Base of Actual Use
The base is applied to the status that the trademark has put into use in America upon the submitting of the application for registration. The evidence of use and the earliest use date shall be submitted when the registration is applied on the base of “actual use”.
III. On the Base of Registration in Other Countries
This base is applied to the status that the applicant has already submitted the registration of the trademark in the country of the origin and it cannot be used in American in short term. This base requires national basic registration, the information of application (including the designated goods) shall stay the same with the Chinese trademark, moreover, the copy of registration certificate is required. Because of the goods will be gone through very strict review in America, there will be a very high chance to encounter correction and remediation on Chinese designated goods, also will lift the risk chance to encounter the official review advise in the late stage.
Documents and information required by submission of application for registration based on
Information and documents required by three (3) bases are as follows:
1.The applicant’s name and address in English.
2.The sample of the trademark
3.The designated goods / services
However, for the different bases of application, besides documents and information above, following documents also be required upon the submission of the application:
Intent-to-use
Actual use
Registration in other countries
None
1) Evidence for actual use
2) Earliest date for the use in America
Copy of other countries’ registration certificate
Trademark’s main procedures and required time
1. Registration’s procedure based on “intent-to-use”
Submission of the application – acceptance for review- review of trademark (absolute and relative grounds) – (issuing review advice) – (reply on the review advice) – Publication of the trademark (30 days) – Approval of the registration of the trademark – Submission of the statement of use – issuing the registration certificate
2. Registration’s procedure based on the actual use
Submission of the application of trademark (also the evidence for use) – Review of trademark (absolute and relative grounds) – (issuing the review advice) – (reply on the review advice) – publication of trademark (30 days) – Approval of the registration of trademark – issuing the registration certificate
3. Registration’s procedure based on other countries’ registration
Submission of the application (also copies of other countries’ registration certificates) – trademark review (absolute and relative grounds) – (issuing review advice) – (reply on the review advice) – publication of trademark (30 days) – Approval of the registration – issuing the registration certificate
Usually, in America, the period will cover 10 -12 months from the submission of application to obtain of the registration certificate, the period will be extended correspondingly in case of official review suggestions or disputes. Moreover, please note that the applicant should submit the evidence of use and the statement of use at 5th-6th year and 9th – 10th year after the registration in order to sustain the validity of the trademark.
The use of trademark requires the applicant can provide the evidence to prove the use of trademark on the designated goods / services. The evidence of use on goods including but not limited to goods’ photos, packages labels, promotion pictures, brochures, purchase contracts and other purchase documents with the trademark as well as the information. However, the advertising or media report cannot serve as the effective evidence for use. The evidence of use on services including but not limited to goods brochures, website introduction and service contract with printed trademark.
The trademark should remain the evidence for use when it is used in America, otherwise the trademark may be invalid in partial or whole designated goods / services due to lack of full evidence in the course of providing of the statement of use.
