An application for trademark registration shall be filed before the U.S. Intellectual Property Office (USTPO).  Trademark registration adopts the “prior use principle.”  There must be a basis for filing application in the United States, which are mainly divided into three types:

(1)  “Intended Use”: This basis applies to cases where the trademark has not been used in the United States at the time of filing the application for registration.  Based on “intention to use” to file an application for trademark registration, the application can be submitted directly without providing evidence of trademark use.  However, when the official passes the trademark examination, an official notice will be issued requesting the applicant to submit evidence of use and the time of first use in the world and the United States in order to obtain a trademark registration certificate.  If the trademark has not been used before it is approved for registration, the applicant may postpone the submission of the statement of use for a period of 6 months at a time, for a total of 5 times.  If the use evidence cannot be provided in the end, the trademark will be invalid.

(2)  “Actual Use”: This basis is applicable to the case where the trademark was already used in the United States when the application for registration was submitted.  When filing an application for trademark registration on the basis of “already used”, evidence of the use of the trademark in the United States and the earliest date of use shall be provided.

(3)  “Registration in Other Countries”: This basis is used when an application for registration of the same trademark has been submitted in the origin country and the applicant cannot provide mark use evidence in the United States for a short period of time.  Application information (including designated goods/services) in the US application should be consistent with those in the application of origin country, and a copy of registration certificate in the origin country should be provided.

In addition to the above information and documents, the following information are also required when filing trademark application in US:

1.    The applicant’s English name and address;

2.    Trademark specimen;

3.    Designated goods and services.

Trademark Main Process and Timeframe

Application based on the intention to use:  Filing application – acceptance by USPTO – trademark examination by USPTO (both based on absolute and relative grounds) – (issuing office action) – (responding to office action) – publication of trademark (30 days) – approval of trademark registration – submitting statement of use – issuing registration certificate

Application based on actual use:  Filing application and at same time submitting evidence –– trademark examination by USPTO (both based on absolute and relative grounds) – (issuing office action) – (responding to office action) – publication of trademark (30 days) – approval of trademark registration - issuing registration certificate

Application based on registration in other country: Filing application and at same time submitting copy of registration certificate in other country –– trademark examination by USPTO (both based on absolute and relative grounds) – (issuing office action) – (responding to office action) – publication of trademark (30 days) – approval of trademark registration - issuing registration certificate

It usually takes 10-12 months from filing trademark application through obtaining trademark registration certificate; it will take longer time if the application encounters office action or opposition raised by third party.  In addition, the applicants should pay attention to the fact that they must submit evidence and statement of use in the 5-6 years and 9-10 years since from the trademark registration, in order to maintain the validity of the trademark.

Requirements for trademark use

The applicant shall provide evidence showing use of the trademark on the designated goods/services.  Evidence of use for goods includes but not limited to: product photos printed with trademarks, product packaging, product labels, exhibition pictures, brochures, sales contracts and other purchase documents and information; but advertisements or media reports cannot be used as evidence of effective use. Evidence for services includes but not limited to: the brochures printed with trademarks, web page introductions, contracts for provision of services and other documents.

It is important to preserve the evidence when use a trademark in United States; otherwise the trademark will be partially or totally invalidated over the designated goods and services for not submitting sufficient mark use evidence during the stage of submitting the statement of use.