The main purpose of a trademark is to establish its own brand image in the minds of consumers to facilitate consumers to identify the source of the commodity through its trademark and to ensure the products or services they purchase have stable quality assurance. In order to indicate the origin of the product, the trademark must be used to distinguish one's own product from others, preventing others from confusing the consumer. For example, the common time-honored brands in China are the "Mao-tai" wine and the "Quan Jude" roast duck restaurant, as well as the "Coca-Cola" drink and the "Mercedes-Benz" car in foreign countries. As soon as consumers see such trademarks, they will be immediately contacted to certain products or services and the quality assurance associated. Therefore, such trademarks can gain the brand value, that is, business value has been associated with the trademark. An enterprise must operate carefully and maintain the quality and credibility of its products constantly throughout the years. Thus, it can establish a good image for its trademark.

The Biggest Difference Between China and The United States in Trademark Registration

China Trademark Law implements the principle of “First to file”, meaning that the acquisition of trademark right is based on the application by the trademark legal system. To put it simply, the person applying for a trademark first according to the provisions of the Trademark Law shall first obtain the trademark right.

Different from China Trademark Law, the United States Trademark Law implements the principle of “First to use”. According to the U.S. Trademark Law, trademarks are used to identify the source of goods or services in commercial transactions. The purpose is to prevent customers from confusing the sources of goods or services to protect the interests of both the buyers and the sellers. The acquisition of trademark rights is based on commercial activities. There is no meaning of trademarks in the absence of commercial transaction. As a consequence, trademarks are always linked to goods and transaction. Since trademarks exist for their use, the United States Trademark Law believes that the first user should obtain the trademark right. Therefore, the acquisition of trademark’s right is based on the judge standard that who use it first. A trademark that has been used but is not registered can also be protected by common law in the state. However, the U.S. Trademark Law also provides federal registration protection.

Why Register A Trademark in The United States?

Now that the U.S. law stipulates that the trademark right is determined by order of actual use, why do we still have to pay a registered trademark? Because the protection of trademarks is territorial, in other words, a registered trademark in one country is only protected in that country. For instance, a trademark already registered in China does not necessarily assume that it will certainly be protected by the trademark law in the United States. If we do not register our trademark in the United States in time, it is still very easy to be registered by others in the State even if it is already a well-known trademark in China. The United States is the country that places the highest priority on trademark protection in the world and is one of the countries that have the most registered trademarks. Its trademark protection system including origin, well-known trademarks, customs protection system of trademarks and so on, is used for reference by many countries in the world.

There are many other benefits of registering a trademark in the United States:

ŸTrademark registration can inform public about the ownership of the trademark;

ŸUS law presumes that the registrant has the right to use and exclusivity throughout the United States of the registered trademark for the goods or services that have applied for;

ŸTrademark registrants are more likely to win and receive more compensation in trademark dispute cases;

ŸTrademark registrants may file a charge of trademark infringement in the Federal Court;

ŸRegistrants can apply for Customs Border Protection (CBP) services based on their registered trademark records to prevent the importation of infringing goods outside the United States;

ŸAccording to the Vienna Convention, a registered trademark in the United States may claim the priority of the trademark in registering goods and services in other treaty countries;

ŸThe registered trademark is an intangible asset of a reputable company. The United States allows the sale of the right to use registered trademarks and registered trademark owners can profit by this means.

Why Should Register Trademarks in The United States As Soon As Possible?

There are many reasons for the applicants to register their trademarks in the United States as soon as possible. Here we only talk about the reason that a majority of people haven't realized yet and it is directly related to the structure of Chinese characters. Chinese characters are hieroglyphs, which emphasize their image without pronunciation. As a result, there are many words and expressions with the same pronunciation but different meanings in Chinese characters. However, when you register an English word trademark, the most common case is to register your trademark in Pinyin. In this way, registering a Hanyu Pinyin trademark will simultaneously block out all other Hanyu trademarks right to register and use with the same pronunciation.

Can We Submit a Chinese Trademark Directly in the United States?

Chinese trademarks can be submitted in the United States, but applicants need to provide the pronunciation of each Chinese character that constitutes the mark and the corresponding English translation. For example, Lawyer Pang once filed a Chinese trademark application to the U.S. Patent and Trademark Office for a Sichuan restaurant 'Ziwei Chengdu', which is very popular in Los Angeles.

What Is the Difference Among "TM", "SM" And "®"?

If you want to affirm the right to use the trademark, you can add a "TM" product mark or an "SM" service mark next to the trademark, without registration. But if you want to add a "®" mark, you can use it only after the trademark registration application has been approved.

Forms of Trademarks

According to the definition of the US law, a trademark refers to a word, phrase, symbol, design, or a combination of both, for the purpose of identifying and distinguishing a company's products or services. In accordance with the provisions of the U.S. Patent and Trademark Office (USPTO), there are two forms of registered trademarks:

1.     Standard Characters

The so-called standard characters refer to the registered trademark includes only words, letters, numbers or their combination. And there are no special rules for their fonts, size, colors nor any design elements.

Standard characters provide applicants with the broadest right to use, that is, whatever form of use of these standard characters are eligible. To widen the scope of protection, we would advise applicants to state that the mark is normal front when submitting an application. In other words, no color, size or typeface is protected. The normal front here usually refers to TIMES NEW ROMAR or ARIAL.

2.     Patterns

Different from the standard characters, the form of patterns refers to trademarks that you want to apply for with certain design or, letters or words with specific forms. Pattern trademarks have two forms of black and white as well as color. If the trademark is colored, it is necessary to specify the color of each part. If the trademark is gray, the United States Patent and Trademark Office will identify the trademark as a color trademark. In addition, the USPTO has also imposed strict requirements on the trademark design pattern. The trademark pattern must be clear without any sense of blur. Most U.S. trademark applications are submitted electronically. Therefore, the applicant needs to provide the image pattern of the pattern trademark (e.g., jpg format). And USPTO also requires pixels for picture formats, which cannot be smaller than 250 pixels nor larger than 944 pixels.

It is noteworthy that, according to the provisions, the trademark application can only use one of the forms. That is, the use of patter form is not allowed after the use of standard characters, and a combination of both is not allowed to be used in a trademark.

The Classification of Goods and Services

Similar to China's Trademark Law, the exclusive right to use a registered trademark is applicable only to a certain extent, which is the type of goods or services to which the trademark is registered. For example, someone only registered the "Panda" restaurant, then others can also register the "Panda" cigarettes and the "Panda" cars. Thus, it's very important to make clear the classification of your goods or services before applying for a registered trademark.

Although the United States follows the International Nice Classification, its product service offerings tend to be more specific than the product service offerings in the Nice category. For example, the product "Computer Peripherals" is a product item that is regulated by the Nice Classification, but this item cannot be accepted in the United States because the range of commodities "Computer Peripherals" is too broad and not specific. If you want to be accepted by the USPTO, you must specify your products as "keyboard, mouse, modem, scanner, printer, etc.". We recommend that applicants may provide the universal name of their goods/services in the industry when choosing the goods/service to apply rather than choose strictly from the Similar Goods and Services List" published by the China Trademark Office.

When choosing goods/services, they must be limited in the goods that are produced or services that are provided since the United States prefers the principle of "First to use" though it does not limit the number of goods/services submitted. It must not be assumed that the more goods submitted, the wider the scope of trademark protection and then choose some services/goods that are not manufactured, sold or provided at all. This is likely to result in the cancellation of the entire trademark.

The Application Basis of Trademark Registration in The U.S.

The so-called trademark application basis refers to the status of the trademark in the market when the applicant puts forward the application. According to the provisions of the Trademark Law, there are four kinds of bases for the registration application of U.S. trademarks:

Use in commerce

Trademarks that are already used in the United States or foreign trades may be filed applications by "use in commerce". This kind of application should provide evidence that the trademark has already been used in products at the beginning of the application, which means the earliest time of using the trademark and specimens should be provided. Effective specimens may include labels used on the product, packaging and other photographs that reflect the use of the trademark of material objects. If it is the service trademark, specimens can also be business cards, invoices, corporate letterheads with trademarks printed and so on. The application procedure is relatively simple. The USPTO shall issue the registration certificate right after it confirms that there is no objection without the need to fill other materials.

Intent to use

If the applicant has a real will to use the trademark in U.S. commerce, it may use the "intent to use" as the basis for a trademark application. This kind of application can simply provide the application and the trademark samples at the initial application without the need to provide specimens. It's only been required to provide the Amendment to allege use and specimens before the announcement of the USPTO or provide Statement of Use and specimens after the USPTO has issued the Notice of Allowance upon expiration of the announcement period. In this way, the original "intent to apply" can be converted to "already apply" and the registration certificate shall be issued if there is no objection. If there is not enough time for the applicant to provide specimens during the application period, it allows applicants to apply for an extension of 6 months for a total of 5 times and no more than three years. Otherwise, the trademark registration will be revoked.

Foreign registration

In the case that the same trademark of the applicant has been successfully registered in another country, foreign registration can provide the basis for them but must with the following conditions:

1.     The applicant must prove that they have a bona fide intention to use the trademark and submit the corresponding confirmation. If the affirmation is not filed with the trademark application, it must indicate that the applicant has the bona fide intention of using the trademark, starting from the filing date of the trademark application.

2.     The applicant's trademark has been registered in the applicant's own country and has the certificate of full legal validity, that is, copies of the registration document, etc. These certificates must indicate the applicant's name, trademark and the goods or services using the trademark. If these documents are not presented in English, English translation is also required.

3.     If evidence indicates that the applicant's trademark is going to expire in the applicant's own country before the publication of the U.S. registered trademark, the applicant must submit proof of registration renewal and be valid prior to the publication of the trademark in the United States. If these documents are not presented in English, English translation is also required.

Claim of priority

According to the provisions of the Paris Convention, within 6 months of an applicant of trademark registration putting forward an application in one country, the applicant can obtain claim of priority in the United States or other member countries of the Paris Convention when submitting an application. In other words, the filing date in the United States can be traced back to the initial filing date in another country. If the application is approved by the country originally filed, applications filed to the USPTO can also be approved accordingly. This kind of application has great advantages as well as risk: if the domestic trademark registration is successful, the United States will also approve the registration accordingly; and if the domestic application is rejected, then the U.S. application will be rejected.

A claim of priority can be performed after meeting the following conditions and please pay attention that claim of priority is not an independent basis for the application:

1.     The basis of foreign priority can only be used within six months of the applicant submitting the same trademark registration application in his/her own country.

2.     The applicant must submit a date, serial number and country of application for registration of a trademark in his/her own country or prove that the application is a continuation of the last application denied or abandoned and that the previous application did not obtain any rights and would not be treated as a statement of priority as well.

3.     Applicants must demonstrate that they have a bona fide intention to use the mark and submit a corresponding confirmation. If the affirmation is not filed with the trademark application, it must indicate that the applicant has the bona fide intention of using the trademark, starting from the filing date of the trademark application.

4.     Before a U.S. trademark is approved for publication or registration, the applicant must be established on the basis of one of the "use in commerce", "intent to use" and "foreign registration".

No matter what kind of basis your application is based on, the fundamental problem is "actual use." Therefore, whichever basis it is expected to apply for trademark registration, the sooner the trademark is put into use, the more favorable the applicant will be.

The Process and Materials of Trademark Registration Application

The basic steps of applications that are based on use in commerce:

Submit the application

1.     Searching in the PTO database to ensure that the trademark you need to register will not be the same as the one currently registered or in use is quite necessary.

2.     Choose the basis for the application according to the current status of the trademarks you want to apply.

3.     Submit application materials:

a)       Applicant's passport, business license (in Chinese, English name and address)

b)      Goods or services items (using the Nice Agreement for the International Classification of Goods and Services for the Registration of Trademarks.)

c)       Trademark pattern: a clear trademark pattern, the electronic version of the LOGO (JPG format). Note: If the trademark is colored, please specify the color and use it according to the specified color in the future. If the trademark is black and white, you can use any color later on.

d)      A copy of "Registered US Trademark Attorney" and fill in one standard character trademark and a category of goods or services.

After submitting the application

4.     The Patent and Trademark Office (PTO) carries out reviews and examinations, and there will be two results: approval of the application, publication of the trademark; or rejection of the application.

If the PTO rejects the application, it will send a letter of rejection to the applicant asking the applicant to reply within six months. If the applicant fails to respond on time, the application will be considered as being abandoned. If the applicant replies on time, the mark will be published if it meets the requirements of the PTO.

If it still does not meet the requirements, the PTO will issue a letter of refusal once again to request the applicant to reply within 6 months. If the applicant fails to reply on time, then the application deemed to be abandoned. If the applicant replies on time and meets the requirements or files an appeal, the PTO will publish the trademark. Otherwise, the applicant's appeal will be submitted to the Trademark Appeals Board (TTAB).

5.     The objection period is the three months within the publication of the trademark. If there is no objection raised or the objection is rejected, the trademark registration is completed.

After the registration is completed

6.     During the 6th to 7th year in the use of the trademark, the applicant must submit a statement of the use of the trademark or an understandable declaration of non-use, or the registered trademark will be canceled.

7.     Before the registration of a trademark up to 10 years ago, the applicant must apply for a renewal of the trademark's right of use with a grace period of 6 months. Otherwise, the trademark will be canceled.

After the above steps are completed by applications based on the intent to use, the USPTO will issue a notice of its permission to use. Within six months of receiving the notice, the applicant may:

1.     Extend the application up to 30 months.

2.     Submit a statement of use. After the PTO reviews the statement of use, the trademark will complete registration if it is approved.

3.     If the applicant fails to respond within six months of receipt of the notice of permitted use, the trademark will be canceled.

The steps for using the basis of foreign registration are basically the same as those of using the basis of use in commerce. But the PTO makes the following requirements on the qualifications of applicants:

1.     The country where the trademark registered must sign relevant treaties with the United States.

2.     The trademark registered in foreign countries and types of goods or services that use the trademark must be consistent with the trademarks applied in the United States and goods or services that will use the trademark.

The steps for using the basis of foreign priority are basically similar to those of using the basis of use in commerce. Extra steps are as follows:

1.     In the six months after the foreign registration application is submitted, an application for registration of the same trademark should be filed in the United States.

2.     If the application meets the preliminary requirements, the PTO will require the applicant to submit the foreign trademark registration certificate within about one year and the following steps cannot be carried out until the applicant submits the certificate.

Trademark samples of Law Offices of Fei Pang