How to apply for a registered trademark in the United States when the overseas layout of trademarks? What are the precautions for registered trademarks in the United States? The questions that these applicants are generally more concerned have answers in this article.
The basis for applying for a trademark
Applying for registered trademarks in the United States, in addition to the trademark pattern, commodity category and commodity service items, it also needs a certain foundation. Different foundations determine the different documents submitted during the application process, which will affect the success rate of trademark registration, and even affect the effectiveness of the registered trademark.
01 trademark actually used in the United States
If the applicant's plan to apply for the application has been put into practice in the United States, this is the best application basis. When submitting the application for trademark registration, applicants need to provide the earliest date of trademarks in the United States and trademark evidence. This provision provided a good protection for trademark right holders. In the future, if there is a dispute between trademark ownership, these are good evidence materials.
02 trademarks intend to use in the United States
If the trademark planned to apply is not put into actual use in the United States, but there will be plans to use in the United States in the future, it is suitable for this foundation. When submitting a registration application, the applicant does not need to provide any certification materials. In the case of the successful review and announcement period of the trademark, or when there was any objections, the disagreement failed or the disagreement was withdrawn after the disagreement, and the US Patent and Trademark Office issued a notice of approved trademark registration. At this time, the applicant shall submit evidence of the actual use of the trademark in the United States. If the applicant cannot provide evidence for the time being, the submission may be applied. If it is still unable to provide evidence after several extensions, the US Patent and Trademark Office will eventually issue a trademark registration certificate. In other words, trademarks cannot be registered in the end. For applicants who are unlikely to enter the US market in the next few years, it is not advisable to choose this foundation.
03 trademarks in the original country
Based on the registration of trademarks in the original country, applicants can also apply for a registered trademark in the United States. During the application stage, applicants do not need to consider the issue of using evidence. For applicants who have no actual use in the United States and have not recently used plans, they are suitable for choosing this foundation. When submitting a registration application in the United States, if the trademark has been registered, the applicant shall submit a copy of the registration certificate and English translation. If the trademark of the original country is still in the process of application, the applicant can submit the acceptance notice and English translation first, and after the US Patent and Trademark Office will issue a approval notice, the registration certificate of the original country can be submitted. It should be noted that when the US trademark is approved and registered, it should be ensured that the registered trademark of the original country is still valid.A registration certificate will be issued.
04 The preferred right of trademark
If the applicant enjoys the preferred right of trademarks in the Paris Convention, you can apply for registration on the basis of this, but you need to combine the three aforementioned three One of the foundations. In the application stage, applicants only need to explain the basic information of the priority. After the US trademark is approved and registered, the applicant needs to provide documents and information required by other foundations.
For the applicant, the choice of application basis does add some difficulty, but the law also leaves some flexible space. When submitting a trademark registration application, the applicant can choose multiple foundations at the same time, as long as the content is not contradictory. In the application stage, you can delete the unsuitable foundation at any time. Based on the priority, the basis can be increased or modified within the period of priority. Before the trademark announcement, it can increase or change the foundation. After the trademark announcement, the foundation can also be added or modified. It only needs to be approved by the examiner. If it involves procedures such as objection, revocation, etc., it is necessary to obtain the consent of the other party. Therefore, the applicant only needs to choose the basis according to the actual situation.
Two ways to apply for trademarks
There are two ways to apply for registered trademarks in the United States: one is to apply directly, also known as separate applications, a single application; It is Madrid's registration, that is, the United States is specified through Madrid's international registration. These two channels have their own advantages and disadvantages.
The process of direct application is: the applicant entrusts the agency of the United States or Canada and submits a trademark registration application to the US Patent and Trademark Office. Various official documents are conveyed by the local agency and notified the applicant.
The biggest advantage of this way is that the speed is fast. Generally, you can submit an application in 1-2 working days. You can get an earlier application date and immediately enter the review stage. Another advantage is flexibility, unless the original national trademark registration is the basis, it is not affected by the registration of domestic trademarks. The disadvantage of this path is that the cost is high, most of which are lawyers' fees for foreign agencies. However, in the application process, it is possible to consult foreign lawyers directly, which will help improve the success rate of registration.
02 Madrid International Registration
The process of Madrid's international registration is: the applicant submits an application to the State Intellectual Property Office through the domestic agency through the domestic agency. The International Bureau of Property Organization will be transferred to the US Patent Trademark Office by the International Bureau. The official documents of the US Patent and Trademark Office first feedback to the International Bureau, and the International Bureau conveyed to the domestic agency and notified the applicant.
If multiple countries and categories are specified at the same time, Madrid's international registration costs low and simple procedures. If only the United States is specified, the cost and application directlyAlmost the same. The biggest disadvantage of this way is slow speed. Because the registration application requires a layer of conversion, if there is a delay in the middle, the earlier application date cannot be obtained, and the review will be lagging behind. Compared with individual applications, it will lag for 4-6 months. Another disadvantage is that it is not flexible. It must be based on domestic trademarks. Basic information such as trademark patterns, applicants names and addresses must be completely consistent, and the scope of goods and services must be consistent or reduced. Once the domestic trademark fails, the effectiveness of international registered trademarks may be affected, called the \u0026 ldquo; center blow \u0026 rdquo; As long as the cause of the failure of domestic basic trademarks occurs within 5 years from the date of international registration, it will be affected by the central blow. Although it can be transformed into a separate state registration in the future, additional costs will be incurred.
If the United States is specified through Madrid's international registration, the default application basis is to use. During the application stage, applicants only need to sign a statement, and there is no need to provide evidence for trademark use. After the trademark is approved and registered, the U.S. Patent and Trademark will issue a registration certificate directly, and the applicant does not need to provide evidence.
When selecting a trademark application channel, the applicant should compare the comprehensive comparison based on the actual situation of their own actual situation, from the aspects of cost, speed, application foundation, and degree of lawyers' help.
The use requirements of the three trademark registration
According to the relevant provisions of the US trademark law, every 5-6 years and renewal after the trademark registration, the registrant shall should Actively submit the actual evidence of the trademark and sign a statement. If you cannot provide evidence and cannot provide a legitimate reason that the trademark is not used, then the registered trademark will automatically fail.
The types of evidence include: product packaging, sales contracts, transportation orders, invoices, operating venues, etc. that can prove that trademarks have various materials in the United States, photocopies or photos can be acceptable. If only advertisements and publicity are used, it cannot be counted as use. Under normal circumstances, the registrant only needs to provide evidence for some designated products or service items.
The statement should be stated that the registered trademark has actual use on designated goods or service items, and listed specific products. For products without actual use, you should take the initiative to delete. If a false statement is made, it should be sanctioned by law.
In practice, the examiner can designate a certain product or service in accordance with the right of vocational rights, and requires the registrant to provide targeted use of evidence. If the registrant cannot provide qualified evidence, the corresponding goods or services will be deleted. If the circumstances are seriously suspected of fraud, the registered trademark may fail.
The US \"Trademark Modernization Act\" will be implemented on December 27, 2021. The bill has added a system of revocation of unrealistic use of trademarks. The bill stipulates that if the trademark has been registered for three years, it has not been used, or it is submitted before some specific time nodesIf there is a problem with the evidence, others can apply for the cancellation of the registered trademark. The aforementioned \u0026 ldquo; specific time node \u0026 rdquo; includes: the application date of the trademark based on actual use; based on the planned use, the applicant will modify the foundation to the actual use date; Submit the expiration date of the statutory period of the statement. This provision not only improves the requirements for the use of the application stage, but also strengthens the supervision of third parties after the use of trademark registration.
It can be seen that applying for registered trademarks in the United States, \u0026 ldquo; Actual use of \u0026 rdquo; is a substantial problem that cannot be avoided. Once the applicant has the idea of \u200b\u200bregistering trademarks in the United States, the problem of using trademarks in the United States should be considered.
The feasibility and necessity of the four categories cover
The full class cover \u0026 ldquo; the answer is negative.
The full class coverage is not realistic due to the limitation of the application foundation and the restrictions of evidence after registration. Even if the trademark registration is obtained in the United States based on domestic registration or through Madrid's international registration, the trademark will fail due to the unable to provide evidence. Affected by these two aspects, the risk of trademark grabbing in the United States is relatively low, and there is no need to defense through multiple categories of registration.
In order to avoid the withdrawal of the three risks, domestic trademark registrars will choose a strategy to apply \u0026 ldquo; idle \u0026 rdquo; trademark repeatedly applying for one time. Can the United States follow this thinking, and apply for a repeated application after the statutory period expires for trademarks that cannot be provided? At present, US laws have not prohibited the regulations that fail to re -apply for failure trademarks. However, U.S. law depends on reiterating the integrity of the invitation, and suggest that the right holder should not abuse the freedom given by the law.
Compared with applying for trademarks in China, the designated American designation has indeed increased a lot of thresholds. Especially for the regulations for mandatory evidence after registration, Chinese rights holders should pay more attention. It is recommended that applicants strictly abide by the laws of the United States, carefully choose the application basis, temporarily avoid the use of problems, and integrate the use of future trademarks and retain relevant evidence. In this way, we can effectively protect the rights and interests of trademarks and increase the value of registered trademarks.