Trademark registration in the USA

The US Trademark Protection System

According to US law, a trademark is any word, phrase, symbol, design, or combination thereof used to identify the source of goods or services, including goods trademarks, service trademarks, collective trademarks, and certification trademarks.

Traditionally, trademark rights within the United States are first established through the use of a logo on specific products or services, and these rights are referred to as “common law” rights. Common law rights can only be enjoyed in the geographical area where the symbol is actually used, and are not automatically protected nationwide in the United States.

Federal trademark registration has the effect of presumed right to exist nationwide and presumed use nationwide. The federal registration of a trademark does not require that the trademark has already been used, and only intended use is acceptable. However, before the trademark is officially approved for registration, the authorities will provide a certain period of time, requiring the applicant to use it and provide corresponding evidence of use. Otherwise, the registration will not be approved.

USPTO Introduction to the US Intellectual Property Office

The United States Patent and Trademark Office (USPTO) was established in 1802 and is an important agency responsible for overseeing national patent and trademark applications and approval procedures in the United States. It is under the jurisdiction of the United States Department of Commerce. The main responsibility of USPTO is to provide patent protection, trademark registration, and intellectual property certification for inventors and their related inventions.

website：www.uspto.gov

address：USPTO Madison Building, 600 Dulany Street, Alexandria, VA 22314（Headquarters, Alexandria, Virginia）

Telephone：1-800-786-9199（Free business consultation），Working hours: Monday to Friday, 8:30 AM to 8:00 PM Eastern Time, except during US holidays

Email：ebc@uspto.gov

Introduction to Trademark Registration in the United States

3.1 The principle of prior use of trademark rights in the United States

The US trademark law follows the principle of first use, which means that whoever uses the trademark first has priority in trademark rights and can oppose others’ confusing use of the same or similar trademark.

Section 1057 (b) and (c) of Title 15, Commerce and Trade, Chapter 22, Trademark (also known as the Langham Act) of the United States Code provide that:

(b) Registration certificate as surface evidence

The registration of a trademark on the main register established in accordance with this Law shall be evidence of the validity of the registered trademark and the apparent establishment of the trademark registration; It is also a surface evidence of the registrant’s trademark ownership; At the same time, it is the surface evidence of the registrant’s exclusive right to use the registered trademark on the goods or services specified in the registration certificate based on the conditions and restrictions listed on the registration certificate in commercial activities.

According to the provisions of this law regarding the registration of trademarks in the main register, an application for the registration of a trademark shall constitute a presumed use of the trademark, granting it a nationally valid priority in the registered goods or services against others. Except for those who have not yet abandoned their trademark and whose trademark has not been abandoned before the aforementioned application is submitted

(1) The trademark has already been used;

(2) A trademark registration application has been submitted and is awaiting examination or has already been approved for registration; perhaps

(3) A foreign trademark registration application has been submitted and priority has been granted based on it. The trademark registration application has been timely submitted in accordance with Article 1126 (d) of this Law and is awaiting examination or has been approved for registration.

The rights holder of identical or similar trademarks that have already been used before submitting a trademark registration application may object to the registration of a federal trademark or resist infringement claims of a registered federal trademark.

3.2 The main and auxiliary register system for federal trademark registration in the United States

According to US law, federal trademark registration can choose between primary or secondary registration.

3.2.1. Main Register Registration of Trademark

Obtaining trademark registration in the USPTO Principal Register will provide the best protection for defending the brand. There are many benefits to registering in the master book, including:

(1) After the trademark is approved for registration, it is presumed that the registrant has already used the trademark nationwide since the date of filing the trademark registration application;

(2) The validity of the presumed trademark, the ownership of the trademark by the registrant, and the exclusive right of the registrant to use the mark nationwide for the designated products and services;

(3) Restricting the scope of use of identical or similar trademarks by others before trademark registration, meaning that other identical or similar trademark owners can only apply their own trademarks within the original scope;

(4) After the trademark is approved for registration, no one shall use identical or similar trademarks that may cause confusion to consumers;

(5) Obtain injunctive relief and compensation for benefits, damages, and costs in federal court litigation, and in some cases increase damages and attorney fees;

(6) Obtain the right to register and file with the United States Customs and Border Protection to monitor and prevent the importation of products with infringing marks;

(7) Those who forge registered trademarks may be subject to criminal penalties.

However, not all logos can be registered in the main register. The trademark conditions for registration in the main register are: the trademark itself has distinctiveness; Or it may not originally have significance, but has acquired a second meaning * through widespread use, thereby being able to identify the source of goods or services.

*The “second meaning” of a trademark refers to descriptive text, graphics, or combinations thereof that directly express the common name, graphics, model, quality, main raw materials, function, purpose, weight, quantity, place of origin, and other characteristics of goods or services. After long-term use, a new meaning is generated that has the function of indicating the specific source of goods or services beyond the original descriptive meaning. Distinctiveness is the essential characteristic of a trademark, and compared to the inherent distinctiveness of a trademark, the second meaning of a trademark is to acquire distinctiveness through use. It is actually a commercial symbol that is not protected by traditional trademark law and is derived from narrative text or graphics that are prohibited from being used as trademarks.

Article 1052 of the Lanham Law stipulates the signs that cannot be registered directly on the main register, mainly including:

(1) Mainly and solely as a sign of surname;

(2) Signs that are similar to previously registered or used trademarks and may cause confusion for consumers;

(3) Unethical and derogatory signs;

(4) Deceptive signs;

(5) Descriptive markers;

(6) Geographical indications indicating the origin of wine or Baijiu, but the relevant wine and Baijiu are not originated in the region indicated by the geographical indication;

(7) Symbols containing flags, military uniforms, or badges of the United States, states, cities, or foreign governments;

(8) Signs containing the name, portrait, or signature of any living individual, unless written consent is obtained from that individual;

(9) Any emblem containing the name, signature, or portrait of a deceased United States President while the widow is alive, unless the widow’s written consent is obtained.

3.2.2．Registration of trademark auxiliary book

The difference between primary registration and secondary registration mainly lies in the requirement of distinctiveness. Some symbols, such as surnames, descriptive symbols, etc., although currently not identifiable, may gain a second meaning through substantive application and promotion, and can be registered in the Supplementary Register.

Although trademarks registered through the auxiliary register may not enjoy the same legal validity and ownership presumption as trademarks registered through the main register, registration still has benefits, mainly including:

(1) Can effectively avoid subsequent registration of other similar trademarks that are easily confused;

(2) Can be used as a basis for submitting foreign trademark applications;

(3) Owners can use registration symbols in conjunction with the trademark“ ®”。

The trademark applied for registration in the supplementary register must be a trademark already used by the applicant. If the trademark has reached a certain degree of continuous exclusive use and promotion, making it easy for relevant purchasing groups to associate goods or services bearing the trademark with a single source, they can apply for registration in the main register.

As long as substantial exclusive use of a trademark has been achieved for five consecutive years and relevant proof is provided, USPTO can accept sufficient evidence of its distinctiveness. However, additional evidence such as sales reports, advertising expenses, advertising and promotional materials, as well as consumer testimony and investigation reports regarding consumer recognition of the trademark, need to be submitted.

3.3 Trademark Renewal

After the trademark is registered with USPTO, during the 5-6 years after the registration date, the owner must submit a declaration to USPTO confirming that the trademark is being used in the commercial field of the United States for all products or services covered by the registration.

For those who have been registered for 10 years, they should be renewed and renewed every 10 years thereafter. The 10-year renewal application must include a statement claiming that the trademark is being used in the commercial field in the United States for the listed products and services; And for all types of products and services, the declaration must be accompanied by at least one usage sample.

Trademark registration process in the United States

According to the latest regulations of USPTO, with few exceptions, trademark registration applications filed in the United States after February 15, 2020 must be submitted electronically through the electronic trademark application system TEAS and TEASi for international applications.

Starting from August 3, 2019, according to the regulations announced by USPTO, if a trademark applicant, registrant, or party to the Trademark Trial and Appeal Board proceedings outside the United States, they must hire a practicing lawyer in the United States to represent them in related matters. The trademark applicant, registrant, or party whose domicile is outside the United States refers to a person who does not have a domicile in the United States or its territory. An individual’s residence is the place where they reside and intend to become their primary residence. The residence of an entity is the main place of business (headquarters) where senior management of the entity typically directs and controls its activities.

4.1 The process of submitting an application directly to USPTO

Choose a trademark and goods/services

The applicant needs to confirm:

(1) The trademark to be registered and its form, i.e. using only words, stylized wording and/or design, or sound signs.

The motion or multimedia logo itself cannot be submitted as a document displaying the actual application intention, although it is an acceptable “specimen”, it is not allowed to be used as the applied logo. According to the US regulations [37 C.F.R. § 2.52 (b) (3)], if the logo contains dynamic images, the commercial impression that best describes the trademark shall prevail, and the accompanying drawings may depict one frame in motion or up to five static frames to display various points in motion. The applicant must also provide a description of the trademark.

(2) Goods or services that use (or will use) a trademark.

Retrieve USPTO database

After selecting a trademark, the applicant should use the Trademark Electronic Search System (TESS) to search the USPTO database to determine if any confusingly similar trademarks for related goods and/or services have been registered or submitted for application.

Note that after searching the USPTO database, even if the applicant obtains a result of “O.K.”, do not assume that the trademark can be registered. After the application is submitted, USPTO will conduct its own search and legal review, and may refuse to register the trademark.

For a complete list of possible substantive grounds for rejection and detailed explanations, please refer to Chapter 1200 of the Trademark Examination Procedure Manual (TMEP, current version: July 2021 edition).

USPTO cannot provide preliminary legal opinions on whether it will approve a specific trademark, and submitting a trademark registration application is the only way to obtain USPTO’s approval or rejection decision.

Check the trademark status to avoid potential conflicts

According to TESS search results, applicants should check the status of any potentially conflicting applications or registrations through the Trademark Status and Document Retrieval System (TSDR).

Based on all the above information, the applicant needs to reassess whether seeking registration is meaningful. Please note that once an application is submitted, USPTO will not cancel the application or refund fees unless the application fails to meet the minimum application requirements. Even if the trademark is not registered after substantive examination by the examiner, USPTO will not refund the application fee.

Create JPG images (only for stylized text or design)

If the logo to be registered contains stylized text or design, the applicant first needs to create a JPG (USPTO’s only acceptable format) image file of the logo and save it on their local computer. Similarly, if the applicant submits an application based on actual commercial use – that is, selling goods or providing services under the specific trademark – they need to create JPG or PDF image files of the “samples” used (such as labels or service advertisements attached to goods), which are samples of the actual appearance of the logo taken in portrait or digital form.

Attention: Image files lacking samples will not hinder the submission of initial applications through the TEAS Standard application form. However, the TEAS Plus application form will not accept the transmission of purpose based application forms that do not include attachments in the “Specimen” field.

Prepare the application fee

In the initial application form of TEAS, there are two filing options: TEAS Plus and TEAS Standard.

The application fee for the initial trademark application for goods/services is: $250 for each category of goods/services listed using the TEAS Plus application option, and $350 for each category using the TEAS Standard. (Updated in March 2022, the amount is subject to the trademark fee table.)

For TEAS Plus, payment is required for each category when submitting the application. For TEAS Standard, only one category of fees needs to be paid first, but all other additional fees payable must be submitted before the application is approved.

Submit the application online

The TEAS application form can be submitted through USPTO’s Apply Online page. On the Trademark initial application form page, links are provided for the two main options of the application: (1) TEAS Plus; And (2) TEAS Standard.

The steps for filling out the TEAS Standard are almost the same as those for TEAS Plus, with the main difference being that more fields must be filled out in TEAS Plus, and TEAS Plus applications require selecting an entry for the category of goods/services from the USPTO classification manual, rather than the “free text” entry allowed in TEAS Standard.

According to the current TMEP, only master book registration can be submitted through TEAS Plus, and applicants need to:

(1) Submit a complete application using the TEAS Plus form;

(2) Agree to submit certain communications related to the application through TEAS, such as responses to review comments; and

(3) Agree to receive communication regarding the application via email.

Meanwhile, TEAS Plus requires that the application documents include the following content when submitted:

(1) The applicant’s name and address;

(2) Proof of the applicant’s legal entity and citizenship status;

(3) The name and address for receiving paper correspondence;

(4) Email mailing address and authorization – used by USPTO to send letters to applicants via email with email mailing address and authorization;

(5) Filing Basis or Bases for Application;

(6) Identification and Classification of Goods/Services – The correct classification of goods/services must be directly selected from the USPTO Acceptable Identification of Goods and Services Manual, otherwise only TEAS Standard application can be selected;

(7) Application fee;

(8) Signed Verification;

(9) Drawing;

(10) Color declaration and color description;

(11) Description of Mark – If the trademark is not in standard characters, a description of the trademark must be provided;

(12) Prior registrations for Same Mark for the same trademark;

(13) Translation – If the trademark contains foreign language, provide a translation of that language;

(14) Transliteration of non Latin characters – if the trademark contains non Latin characters, provide transliteration of these characters;

(15) Consent to Registration of Name or Portrait – If the trademark contains someone’s name or portrait, it can: (a) declare that the registered name or portrait belongs to a living individual and provide written consent from that person; Alternatively, (b) declare that the registered name or portrait does not involve living individuals;

(16) Concurrent Use refers to two or more unrelated applicants applying to USPTO for registration of the same trademark, with each party’s registration limited to specific commercial channels or territories;

(17) Multiple Class Applications;

(18) According to Section 44 Applications of the U.S. Trademark Act of 1946 (15 USC 1126), for international applications, the category of goods/services covered by a foreign applicant’s U.S. trademark registration application cannot exceed the category covered by the prior foreign trademark application or registration certificate.

If the applicant chooses to apply for TEAS Plus but the documents do not meet the requirements, the examiner will issue an Office Action, requiring the applicant to pay the application fee according to the requirements of TEAS Standard application and handle the subsequent procedures according to TEAS Standard application.

After the application documents are submitted, TEAS will immediately display a “Success” page to confirm that USPTO has received the documents. If there are any doubts about the application date, this page can serve as evidence for submitting the application and can be copied and pasted into electronic records for storage. TEAS will also send a separate electronic confirmation email containing a summary of the application information and general procedural information. The applicant or representative lawyer should immediately review the abstract to ensure accuracy.

Track application status

5-7 days after submitting the application, the application status can be tracked through the TSDR system. Applicants should not attempt to submit a ‘Voluntary Amendment’ through the online system until the original file has been fully uploaded to the USPTO database.

During the pending period of the application, the applicant is responsible for checking the application status at least every 3-6 months between the submission date and the registration date.

Responding to review comments

If the trademark application meets the minimum requirements, USPTO will assign an examiner to the application. The examiner will determine whether the application is a trademark allowed to be registered under federal regulations.

If the application is rejected or a requirement needs to be further met, the examiner will issue an Office Action to the applicant. Within 6 months after the issuance of the review opinion, the applicant must submit a defense opinion, explaining each reason for rejection and the unfulfilled requirements.

If the applicant fails to respond to the examination opinion within 6 months, the application will be abandoned. Abandonment refers to the termination of the application process and the refusal to register the trademark. If the application is abandoned, the application fee will not be refunded. If the applicant wishes to continue the application, they must submit a request for re examination of the application within 2 months after the date of abandonment; If the request is not submitted within 2 months, a new trademark application will be required and the corresponding fees will be paid.

In order to avoid the application being abandoned, the applicant must promptly submit their defense opinions and provide explanations for each rejection reason and/or unfulfilled requirement in the examination opinion. The examiner reviews the defense opinions and determines whether the reasons or requirements for rejection have been refuted or met.

If the applicant fails to successfully defend the examination opinion, the examiner will issue a “Final” rejection opinion, indicating the remaining reasons for rejection or unfulfilled requirements. The applicant may respond to the final examination opinion or appeal to the Trademark Trial and Appeal Board (TTAB).

If the applicant fails to respond to the final examination opinion within 6 months and fails to submit a Notice of Appeal to TTAB, the application will be abandoned. If the applicant wishes to continue the application, they must submit a request for re examination of the application and pay the corresponding fees within 2 months after the date of abandonment of the application; If the request is not submitted within 2 months, a new trademark application will be required and the corresponding fees will be paid.

Publicity and Objections

Approximately one month after obtaining approval from the examiner, the applied logo will be made public and enter a 30 day opposition period. If either party believes that the registration of the logo would harm their rights, they may submit objections to TTAB within 30 days.

USPPTO issues approval notice

Within 2 months after the logo is made public, the applicant will receive a Notice of Allowance (NOA). The approval notice is not a registration certificate, but it indicates that the logo will be approved for registration after USPTO receives a recognized Statement of Use (SOU).

If the applicant has used the applied logo on all goods or services listed on the NOA in the commercial field, the SOU must be submitted within 6 months after the date of issuance of the NOA. The applicant cannot withdraw the SOU, but can submit a supplementary request requesting more time to make up for the deficiencies in the SOU.

If the applicant does not use the applied logo on all goods or services listed on the NOA in the commercial field, they must submit a “Request for Extension of SOU Submission Deadline” and pay the relevant fees within 6 months after the NOA is issued. Submitting one request can extend the deadline by 6 months, with a maximum of 5 requests allowed.

The deadline for submitting SOU or extension requests shall be calculated from the date of issuance of the NOA. If the applicant does not submit a SOU or extension request within 6 months after this date, the application will be abandoned. If the applicant wishes to continue the application, they must submit a request for re examination within 2 months after the date of abandonment of the application.

Registration/Rejection

If the minimum requirements are met, SOU will be referred to the examiner. The examiner will determine whether federal regulations allow registration. Even if the application is rejected due to legal reasons, the applicant cannot withdraw the SOU and the application fee will not be refunded.

If there is no reason for rejection or no need for additional content, the examiner will approve the SOU. Within 2 months after the approval of SOU, USPTO will issue a registration certificate.

If the USPTO rejects the application or if a requirement needs to be further met, the examiner will issue an examination opinion specifying the reasons for rejection or the requirements that have not been met. The subsequent processing steps and time constraints are the same as the stage of submitting the trademark application, except that the examination at this time is focused on SOU. If the problem is not resolved, the application will be abandoned.

The registered trademark owner submits a declaration under Section 1058 of the United States Code

Between the 5th and 6th year after the trademark registration date, or within a grace period of 6 months after expiration, the registered trademark owner must submit a Declaration of Use or a Declaration of Excusable Nonuse of the trademark in accordance with Section 1058 of the United States Code. Failure to submit the above statement will result in the revocation of the trademark.

The registered trademark owner submits a declaration under Section 1059 of the United States Code and an application for renewal under Section 1059

Between the 9th and 10th years after the trademark registration date, or within a grace period of 6 months after expiration, the registered trademark owner must submit a “Declaration of Use” or “Statement of Reasonable Reasons for Not Using” and an “Application for Renewal” for the trademark in accordance with Sections 1058 and 1059 of the United States Code. Failure to submit the above documents may result in the trademark being revoked or the protection period expiring.

For more information, please refer to the USPTO Trademark Online Application Guide.

Introduction to Trademark Office Fees in the United States

Project	Electronic application fee (USD)	Paper application fee (USD)
TEAS Plus application, for each category of goods/services	250	Not applicable
TEAS Standard application, for each category of goods/services	350	Not applicable
SOU, for each type of product/service	100	200
Apply for a 6-month extension to submit SOU for each category of goods/services	125	225
Registration renewal application, for each category of goods/services	300	500
Registration renewal application fee deferred payment, for each category of goods/services	+100	+200

Starting from the implementation of mandatory electronic applications on February 15, 2020, USPTO will no longer accept paper trademark applications. The paper application fee is provided for very limited situations where paper applications are allowed. The “electronically filed” fee applies to most customers. For more information, please refer to the USPTO website.