When a business plans to enter the U.S. market, one of the first steps is to apply for a trademark in the United States, ideally at least a year in advance. This article provides a brief overview of the key considerations and procedures for U.S. trademark applications, while highlighting some important differences between the trademark systems in China and the U.S.
One of the most significant differences between these two systems is that U.S. trademark law is based on the principle that a trademark must be either used in commerce or have a bona fide intention to be used in commerce as a prerequisite for registration. This requirement stems from the Commerce Clause of the U.S. Constitution, which emphasizes that trademarks should be used in U.S. commerce.
Applicants have two main options when filing a U.S. trademark application: they can base their application on actual use in commerce or on intent to use. For an application based on actual use, the trademark must already be in use in U.S. commerce, and the applicant must provide evidence of this use along with the date of first use. In contrast, an application based on intent to use requires the applicant to have a genuine intention to use the trademark on the specified goods or services in the future. After receiving a Notice of Allowance from the USPTO, the applicant has six months to submit a statement of use or request an extension. Additionally, foreign applicants can file for U.S. trademark registration based on their home country’s trademark application or registration.
Another key difference is the requirement to submit a specimen of use when applying for a U.S. trademark. The specimen must demonstrate how the trademark is presented to consumers in a real-world commercial setting. For example, a photograph of a product with the trademark on its packaging would be acceptable, while a digitally created or simulated image would not. The USPTO may reject an application if the specimen does not meet these standards.
Moreover, U.S. trademarks can be registered on either the Principal Register or the Supplemental Register. To qualify for registration on the Principal Register, a trademark must be sufficiently distinctive. However, if a trademark lacks distinctiveness, applying for registration on the Supplemental Register may be a viable alternative. While a trademark on the Supplemental Register can use the ® symbol and the registration process is faster and does not require an opposition period, it has some limitations. For instance, trademarks on the Supplemental Register cannot be recorded with U.S. Customs for IP protection and are ineligible for Amazon Brand Registry. Additionally, they are more vulnerable to cancellation. However, after five years of continuous use, a trademark on the Supplemental Register may be presumed to have acquired distinctiveness, allowing it to be re-applied for registration on the Principal Register.
It is also important to note that the USPTO does not provide a “Classification of Similar Goods and Services” like in China, nor does it have subcategories. There are no limitations on the number of goods or services listed in a U.S. application, and there are no extra fees for additional items. However, Chinese applicants often face issues with overbroad coverage and overly general descriptions of goods or services, which can lead to office actions from U.S. examiners. For example, an examiner might issue an office action if the description of goods is too vague, such as simply stating “clothing” instead of specifying “women’s blouses.”
Once an application is submitted, the USPTO will issue a filing receipt, and the application will typically be assigned to an examiner for review within three to four months, depending on the current backlog. If the application passes examination, it will be published for opposition, allowing the public 30 days to file an opposition. If no opposition is filed, a Notice of Allowance will be issued within about a month. If the application process goes smoothly, it is possible to obtain U.S. trademark registration within eight months. However, if the examiner raises issues with the application, the timeline can become much less predictable.
Overall, compared to the challenging process of obtaining a trademark in China, applying for a U.S. trademark is relatively straightforward. From conducting a comprehensive trademark search to ensure that the mark does not infringe on others’ rights, to assisting businesses in establishing their brand, we are here to help you successfully navigate the process and expand into the North American market.