More and more Chinese companies have turned their attention to overseas markets, and overseas trademark registration is a very critical step. However, due to the large number of countries in the world, most people do not know enough about the process of overseas trademark registration. Today, let’s learn about the process of registering overseas trademarks, taking the US trademark registration as an example~
1. Choose a suitable trademark name and conduct a detailed trademark search
Not every name you want to register can be registered as a trademark. The reality is often that the words you think are most suitable cannot be registered. For example, "chocolate" cannot be registered as a trademark for your chocolate products. "Fragrant" cannot be registered as a trademark for your wine product.
What's more, the trademark you want to register may have been registered by someone else first. When you are considering what brand to use before your product is launched on the market, you should consult your trademark lawyer and ask him to help you search whether anyone has already registered the trademark you want, especially businesses whose products are similar to yours.
2. Prepare U.S. trademark registration materials
The materials required to submit a trademark are:
a. Letter of attorney for U.S. trademark registration. The applicant must sign and seal the letter.
b. The applicant must provide certification of trademark eligibility: if applying in the name of a company, a copy of the business license must be attached; if applying in the name of an individual, a copy of the ID card or passport must be attached.
c. Clear trademark logo (1 copy).
d. List the goods or services for which registration is sought and indicate the trademark category. If you are not sure how to choose the trademark category, please consult the Saibei Intellectual Property Platform.
e. The first date of use of the trademark overseas and in the U.S. (no documentary proof is required); if the client’s trademark has never been used in the U.S., the client should prepare a “Certificate of Intent to Use”.
f. If you have a priority claim under the Paris Convention, please list in detail the goods or services covered by the priority claim and the relevant proof. The priority right can be obtained within six months of the first application.
3. Submission of U.S. trademark registration application
The PTO (United States Patent and Trademark Office) is responsible for trademark registration for the federal government. After receiving the registration application, the PTO will conduct a formality review to determine whether it meets the basic requirements for trademark registration.
If eligible, the PTO will issue a date and send the applicant a notice two months after submitting the application. If the requirements are not met, all materials including the application fee will be returned to the applicant.
4. US Trademark Examination
Four months after submitting the application, the PTO's examiner will review and decide whether the trademark can be registered. If not, the examiner will send a letter stating the reason for the return or the changes that need to be made.
The applicant must respond within six months of receiving the letter, otherwise the application will be terminated. If the applicant's response is not tenable, the examiner will issue a final rejection.
The applicant may appeal to the Trademark Trial and Appeal Board.
5. US Trademark Opposition
If the application is not rejected or the applicant's reply is valid, the trademark will be printed in the trademark announcement. The PTO will send a notice to the applicant informing them of the publication date.
The next 30 days is the objection period.
6. U.S. Trademark Registration Announcement
If there are no reasons to refuse trademark registration, the trademark will be published in the Trademark Gazette, which is published online every week. The trademark will be published in the Trademark Gazette about 1 month after approval.
The announcement period is 30 days, and anyone can file an objection to the application with the Trademark Office. If there is no objection, it will enter the registration stage in about 3 months.
7. Issuance of Certificate
If the application is based on prior actual use of the trademark and no one raises an objection, the PTO will issue a registration certificate 12 weeks after the announcement. If the trademark registration application is based on the applicant's declaration that the trademark will be used in good faith, the PTO will issue a notice after 12 weeks.
The applicant has 6 months to use the trademark and submit a statement of use, or apply for a 6-month extension. This period can only be extended if specifically noted.
Once the Statement of Use is submitted and approved, the PTO will issue a Certificate of Registration. If the registration application goes smoothly, it will take 10-15 months. After successful registration, the validity period is 10 years and no additional fees will be charged during this period.
This is the end of the knowledge on overseas trademark registration in this issue. If you want to get more information about overseas trademark registration, please pay attention and we will continue to answer your questions~
