At present, as an increasing number of Chinese business are gaining ground in the domestic market, they have also begun planning to obtain shares of overseas markets. The U.S. has always been one of the most popular destination markets for Chinese businesses because of its size, access and sound legal protections. The first challenge that every Chinese firm faces during its encounter with the U.S. market is the protection of its trademark as a way of distinguishing its goods and services and establishing its brand image and reputation. The solution is to acquire and maintain a U.S. federal trademark registration.

In most cases there are two ways for a Chinese trademark registrant to apply for trademark registration in the U.S. One is to apply with the United States Patent and Trademark Office (the “USPTO”) under the U.S. Trademark Act (also known as the Lanham Act); the other is to file an international trademark under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Protocol”) and extend coverage to the U.S.

In practice, an international trademark registrant under the Madrid Protocol extending territorially to the U.S. will often receive an office action sent by the USPTO, which is something of a hindrance. The root of this problem is the reservation to or statement on some of the clauses in the Madrid Protocol that the U.S. signed on to when it joined the Madrid Union. On this basis, the USPTO will review specified essential documents in an application for a Madrid international trademark registration based on the corresponding provisions of the U.S. Trademark Act, especially with respect to its review of goods and services.

Consequently, in consideration of both cost and convenience, the author recommends that Chinese trademark applicants who intend to register trademark  in  the U.S. only may submit its trademark application  directly to the USPTO. Following is an introduction to this procedure.

I. The U.S. Trademark Administration Authority

The USPTO is a federal agency under the U.S. Department of Commerce responsible for the review of granting of U.S. patents and trademarks.

The USPTO reviews applications for trademark registration and determines  whether or not a trademark meets the requirements for U.S. federal registration. The USPTO advises on common issues relating to the application process for trademark registration, but it cannot provide any information that might constitute legal advice, nor can it participate or assist in any trademark enforcement proceedings (for example, legal proceedings in courts at any level or trademark protection procedures in the Customs and Border Protection division of the U.S. Department of Homeland Security).

II. Application for Trademark Registration

(1) Filing

(i) The applicant may file an application for trademark registration in either of the following two ways:

  1. The Internet-based Trademark Electronic Application System (“TEAS”). There are three options for the Principal Register of a TEAS trademark registration application: TEAS Plus, TEAS Reduced Fee (TEAS RF) and TEAS Regular. TEAS Plus offers the minimum filing fees for each class of goods or services, but it also applies the most rigid application requirements.
  2. A paper application.

(ii) An application through TEAS offers the following benefits compared to a traditional paper filing:

  1. Quicker response. Upon the filing of the application, the USPTO will send the initial filing receipt by email specifying the application number and listing basic application information.
  2. Lower cost. The USPTO charges lower filing fees for a TEAS application than for a paper filing.
  3. 24/7 service. The applicant may file a TEAS application to the USPTO at essentially any time.

(2) Information Required for the Application

You need to provide the following information in a USPTO trademark registration application:

  1. Name of the applicant;
  2. Name and address of contact person;
  3. Logo of the trademark;
  4. Items of goods or services;
  5. Filing basis;
  6. Trademark sample (for “use in commerce”);
  7. Signature;
  8. Application fee.

(3) About “Trademark Drawings”

Two categories of trademark logo can be submitted to the USPTO: A standard character drawing and a special form drawing.

A standard character drawing does not consist of any design element (any visual component or any unique shape of lettering/numbering). The protection of the mark presented in standard character format covers the letters themselves with no claim to any particular font style, character pattern, size or color.

A special form drawing can consist of a visual component or a unique shape of lettering/numbering.

Apart from those, an applicant may also consider submitting the trademark logo to the USPTO in black and white, since the registrant of a black-and-white trademark can use any color in its actual use of the trademark.

(4) About “Items of Goods or Services”

As a matter of principle, when applying for the trademark registration in the U.S., the applicant should use generic business terminology and describe the specified goods or services in an explicit and specific way.

To be on the safe side, the applicant may consult the Acceptable Identification of Goods and Services Manual (the “ID Manual”) at http://tess2.uspto.gov/netahtml/tidm.html, which is an online retrievable database administered by the USPTO.

Please note that although the U.S. is a member state of the Nice Classification, the USPTO imposes more specific requirements on goods and services than the Nice Classification does. This practice is very different from that of the China Trademark Office. For example, while Category 25, “Clothing”, is a standard term in the Nice Classification and the Classification Table of Similar Goods or Services issued by the China Trademark Office, it is deemed too broad to be accepted by the USPTO. According to the ID Manual, Category 25 should be specified as “Clothing, namely {indicate specific item e.g. shirts, pants, skirts, etc.}” or the equivalent.

In addition, if the applicant decides to apply through TEAS Plus, it is required to select existing acceptable goods or services provided by the ID Manual instead of submitting its own version of such goods or services. There is no such limitation if the application is submitted through TEAS RF or TEAS Regular.

At present, the most convenient method for a Chinese applicant is to file an application with the USPTO in the form of the standard item specified in the Classification Table of Similar Goods or Services issued by the China Trademark Office. Since these goods or services may not meet the requirements for standard items acceptable to the USPTO, the USPTO will issue an office action after the review, and the Chinese applicant can amend the items based on the remedial suggestions specified in the USPTO office action. It is relatively easy for amendments based on official suggestions to pass a USPTO review.

It should be noted here that the U.S. adopts the “first-to-use” principle for trademark protection -- trademark rights naturally arise from use rather than from registration. A trademark user enjoys trademark rights protected under common law for the commercial use of the trademark, even if the trademark has never been registered. Furthermore, the effectiveness of trademark registration depends to a large extent on the actual commercial use of the trademark. Consequently, the author would advise a trademark applicant to specify the goods or services within the scope of goods in actual production and sales or services actually offered. One should never assume that the more items it specifies, the bigger the scope of the trademark protection or that goods never in actual production and sales or services never actually offered will be protected. If the scope is too broad, it is very likely that the registered trademark will fail for all of the specified goods or services.

(5) About “Filing Basis”

The filing basis must be specified in the USPTO application for trademark registration. The filing basis is either use in commerce orintent to use. As a matter of course, the applicant may also assert the basis of a foreign application/registration based on applicable international agreements, or seek registration of the U.S. trademark under the Madrid Protocol.

The various statutory application requirements are based on the specific type of filing basis selected (see below).

(i) The “Use in Commerce” Filing Basis

The applicant may file an application for U.S. trademark registration based on use in commerce after the actual use in commerce of the trademark with all goods or services included in the application. In compliance with the requirements for actual use in the U.S., the applicant is required to have actually used the trademark, for the sale or transportation of goods or the offer of the services, during commercial activity between two or more U.S. states or between the U.S. and a foreign country.

As proof of actual use, the applicant must provide the date of first use of the trademark anywhere and the date of the first use of the trademark in commerce, as well as a real-use sample, in order to show that the trademark is in actual use.

The date of first use of the trademark anywhere refers to the first use of the trademark anywhere in the world. The date of first use of the trademark in commerce refers to the first use of the trademark in commercial activities between two or more U.S. states or between the U.S. and a foreign country. The date of first use of the trademark anywhere should not be later than the date of first use of the trademark in commerce.

(ii) Basis for “Intent to Use”

If the applicant has not used the trademark in U.S. commerce with all of the goods or services in the application but has a bona fide intention to use the mark in the future, the applicant may file an application for the U.S. trademark registration based on intent to use.

It should be pointed out that the basis of intent to use does not exempt the applicant from the obligation of filing a real-use sample of the trademark; it merely exempts the applicant from the obligation of filing the aforesaid real-use sample of the trademark that is in use at the time of the application. Whether the basis is use in commerce or intent to use, the application must declare that the trademark has been used in commerce with all of the goods or services included in the application, and the applicant must file a real-use sample of the trademark with the USPTO before final approval of the trademark registration.

(6) About “Real-use Sample of the Trademark”

The real-use sample of the trademark is different from the logo of the trademark. The latter is merely a display of the form of the trademark, while the former is the real status of the trademark as used for goods or services. In other words, a real-use sample of the trademark must display a combined image of the trademark with the goods & services as used in actual commercial activities.

The real-use sample of the trademark for goods in use usually includes a photo of the product, a photo of the product label, and a photo of the packaging with the trademark affixed thereto. In most circumstances an invoice, a bill of lading, an order form, a brochure, a pamphlet, a business card or a letterhead printed with the title will not be accepted as a real-use sample of a trademark for goods in use.

A real-use sample of a service mark in use usually includes a photo of the service brochure, a photo of the signboard of the service provider, an advertising photo, a photo of the website/webpage or a photo of the business card. In most circumstances, proof of a published advertisement issued by the ad publisher or a media article about the services will not be accepted as a real-use sample of a service mark in use.

III. Review, Announcement and Approval of Trademark Registration

Upon the receipt of the application for registration, the USPTO usually commences its review within three months to check the compliance of the trademark in the application with the requirements in the Trademark Act.

If the USPTO finds any problem during its review, it will send an office action to the applicant, who is usually required to reply within six months of the date of receipt. If there are no problems, or the applicant manages to resolve any problems raised by the USPTO, the trademark will be published in the Official Gazette. During a 30-day announcement period, anyone may file an opposition against the trademark, and the opposition will be heard by the Trademark Trial and Appeal Board (“TTAB”).

If there is no opposition, or if the applicant manages to overcome the opposition (that is, the opposition fails), the following proceedings (after the announcement period has expired) will vary according to the filing basis.

  1. Subsequent Proceedings on Basis of “Use in Commerce”

Normally, a Trademark Registration License will be issued by the USPTO within about three months of the announcement period.

  1. Subsequent Proceedings on Basis of “Intent to Use”

In most circumstances, the USPTO will issue a Notice of Allowance (“NOA”) within two months of the announcement. The applicant is required to file a Statement of Use (“SOU”) with the USPTO within six months of the date that the NOA is issued.

The SOU must include:

  1. A statement that the applicant is currently using the trademark in commerce with all of the goods or services included in the application;
  2. The date of first use of the trademark anywhere and the date of first use of the trademark in commerce;
  3. A real-use sample showing that the trademark is in actual use;
  4. Filing fees.

If by that time the applicant has not used the trademark in U.S. commerce with all of the goods or services, it may submit an Extension Request to the USPTO before the expiration of the aforesaid six-month term. Each Extension Request should grant another six months, and the applicant may apply for a total of five extensions. Accordingly, no more than 36 months may expire after the date of issue of the NOA. Nevertheless, in practice, each new extension request leads to a stricter review by the USPTO, and the applicant will have to offer acceptable reasons for the extension and describe its efforts to put the trademark into actual commercial use.

Upon receipt of the SOU filed by the applicant, the USPTO will commence the review. After the review, if the USPTO decides to approve the SOU, it will issue a Trademark Registration License within two months of the date of approval of the SOU. If the USPTO finds an issue, it will send out an office action. If the applicant fails to file the SOU with the USPTO in compliance with the foregoing requirements, it will be deemed to have abandoned the trademark application.

In practice, the applicant has at most about four years from the USPTO filing date to put the trademark into actual commercial use.

IV. Post-Registration Procedures

The term of validity of a U.S. registered trademark is 10 years from the approval date.

There are two types of trademark registers under the U.S. federal trademark registration system -- the Principal Register and the Supplemental Register. Most U.S. federal trademark registrations are listed on the former, while the latter makes it possible to register an undistinctive mark yet capable of distinguishing an applicant’s goods or services. Normally, the trademark is amended from the Principle Register to the Supplemental Register. The applicant may file the application for registration directly to the Supplemental Register if it deems the trademark is merely descriptive but can acquire distinctiveness through actual use.

During the 10-year period of validity, the trademark registrant is required to take certain actions during the following intervals in order to maintain the validity of the registered trademark in the U.S.

1The period between the 5th and 6th anniversaries of the registration, or during the six-month grace period after the expiration of the aforementioned period

During this time, the trademark registrant is required to file the following with the USPTO:

(i) Mandatory Submissions

Document ①: Declaration of Use or Excusable Non-use under Section 8 of the U.S. Trademark Act (“Section 8 Declaration”)

If the trademark registrant only uses the trademark for selected goods or services, it must delete the rest of the goods or services from the trademark registration. If the trademark registrant has never used the trademark for any of the goods or services during the past five years, it must delete all items from the trademark registration, even if it has plans to use such trademark during the next five years. The retention of trademark registration for the goods or services that were unused during the past 5 years will be deemed a fraud on the USPTO with potentially serious legal consequences.

Document ②: The trademark registrant must, at the time of the filing of the Declaration of Use, submit a real-use sample of the trademark in use for any one (but not all) of the goods or services under each of the specified classes for the registered trademark.

The trademark registrant must file a timely Section 8 Declaration that meets all of the applicable requirements; otherwise the trademark registration may expire and/or be canceled.

(ii) Optional Submissions

Based on the Declaration of Incontestability under Section 15 of U.S. Trademark Act (the “Section 15 Declaration”)

First of all, the Section 15 Declaration applies to only those trademarks registered on the Principal Register. In other words, incontestability is available only for a trademark registered on the Principal Register, and trademarks registered on the Supplemental Register may not claim incontestability.

Secondly, a trademark registrant that meets the following requirements may consider filing the Section 15 Declaration with the USPTO to claim incontestability:

  1. Using the registered trademark in commerce in the U.S. for 5 consecutive years after trademark registration;
  2. No unfavorable final ruling on the ownership and registration rights enjoyed by the trademark registrant for the trademark;
  3. No pending proceedings with the USPTO or a court concerning the rights in the trademark.

In addition, when filing a Section 15 Declaration, a trademark registrant need not provide evidence of the use of the registered trademark for 5 consecutive years --.the registrant must only submit an affidavit to the USPTO declaring such use.

An incontestable registered trademark is the conclusive evidence of the ownership and effectiveness of the trademark. Usually, a third party may only petition the TTAB for cancellation of an incontestable registered trademark for certain specific grounds (not including first use, priority right, or the lack of distinctiveness of the registered trademark).

(2) The period between the 9th and 10th anniversaries of the registration, or during the six-month grace period after expiration of this period

During this time, the trademark registrant must file the following with the USPTO:

Item ①: Based on the Combined Declaration of Use or Excusable Non-use and Application for Renewal under Sections 8 & 9 of U.S. Trademark Act (“Combined Sections 8 & 9”)

Item ②:The trademark registrant shall, at the same time as the filing of the Declaration of Use, submit to the USPTO a real-use sample of the trademark that is in use for any one (but not all) of the goods or services under each of the specified classes.

The trademark registrant must file a timely Combined Sections 8 & 9 that meets all of the applicable requirements; otherwise the trademark registration may expire and/or be canceled.