Understand common problems and precautions in US trademark registration, and register smoothly without stepping into a hole

What if my trademark has not been reviewed by the USPTO?
Why was the trademark that the agency helped me submit found to be uncompliant?How can I remedy this?
Amazon sellers note: Lawful brand owners must file a trademark application through a US attorney that complies with the requirements of the United States Patent and Trademark Office. If you do not comply with the requirements of the United States Patent and Trademark Office, your application may be declared invalid. Amazon complies with the US Patent and Trademark Office's determination of trademark validity. You can evaluate and choose other USPTO compliant options yourself, or you can connect with local law firms selected by Amazon to serve Chinese sellers through the Amazon IPA program.
(For more information about the Amazon IPA project, please copy the link to your browser and view it: https://brandservices.amazon.com/ipaccelerator?lang=zh-CN)
In order to help Chinese sellers successfully register trademarks in the US, we invited Mr. Cui Hong*, who has extensive experience in overseas trademark registration and intellectual property protection, to give you a detailed introduction to the specific trademark registration process and frequently asked questions.

The competent authority for trademark applications in the United States is the United States Patent and Trademark Office (“USPTO”). Due to the requirement for evidence of use, the layout of trademark applications in the US requires additional attention and attention to the special points of US trademark applications before applying for a trademark, the registration review process, and the preparation and submission of evidence of use to avoid detours and ensure compliance applications.

Before applying for a US trademark, the applicant must confirm information such as the trademark being applied for, the designated product or service, and the applicant's name and address, and also need to consider the usage situation or usage plan of the applied trademark in particular. Adequate preparation of the above information is related to the basis, process, time, etc. of filing a trademark application in the US.

2. Basic application and review process

The applicant must submit a trademark application to the USPTO through an American practicing attorney. The USPTO examiner conducts a comprehensive review of the trademark application. If there are no cases of rejection or disapproval, the applied trademark will be announced.

Currently, the USPTO has a large number of cases. The average time from submission of a new application to completion of the review is announced is about 10-15 months, and it may take longer to review individual cases.

The notice period for US trademark objections is 30 days, and objectors can apply for an extension. The total extension is 150 days. With a 30-day objection period, the entire objection period can reach 180 days.

If the notice period expires and there is no objection from a third party, the trademark application can basically be registered on the basis that the usage requirements are satisfied.

US trademark application registration adopts the principle of use first. There are usage requirements for trademark applications, and the applicant's actual usage intention at the time of application is also taken into account. As a result, there are different application bases for US trademark applications. When submitting a trademark application, the applicant can select one or more application bases according to the actual situation. It is important to note that making changes to the application basis at a later stage will incur additional costs.

1 (a) Actual commercial use: For trademarks already in use in the US, submit evidence of use of the trademark in the US at the same time as submitting an application. If there is no objection after the announcement period, the trademark can be registered in the US.

1 (b) Intended Use: For trademarks that have not been actually used in the US, but there are actual plans to use them. After the objection period expires, the applicant is required to submit evidence of use to prove that the trademark has begun to be used in the US. Once evidence of use has been accepted, the trademark will be approved for registration in the US. When submitting evidence of use, the period for submitting evidence is 6 months each time. The applicant can request an extension, up to 5 times.

44 (e) Registration in another country: For trademarks that have been registered in another country. The applicant must submit a trademark registration certificate in another country before registering a trademark in the US. Note that applying for a trademark in the US must be consistent with a domestic registered trademark, and the scope of goods or services cannot exceed the scope of domestic registration. 44 (e) Accepting an application based on multiple domestic registrations simultaneously. When selecting 44 (e) as the basis for the application, it is necessary to ensure that the domestic trademark can be successfully registered.

For trademark applications based on section 44 and section 66, applicants are required to declare that they actually intend to use it in the US at the application stage, but there is no need to submit evidence of use, and the trademark can be approved for registration after examination.

In the US trademark application process, and before maintenance and renewal after registration, it is necessary to submit a statement of use and evidence to prove the continued and true use of the registered trademark. Failure to submit or submitting a statement of use and evidence that is inadmissible will affect the effective survival of the trademark.

For evidence of use, the US Trademark Examination Manual (TMEP) requires each category to submit at least one piece of evidence, but the examiner may request additional evidence. Practice shows that the USPTO's review of evidence is becoming more and more strict, and applicants should take the initiative to provide as much and as much evidence of use as possible. Therefore, applicants are required to rationally plan the trademark layout in the US according to the actual usage situation of the brand and commercial expansion plans, apply as needed, and not blindly “put the trademark first”.

At the same time, it is important to note that when evidence of use is submitted 5-6 or 10 years after trademark registration, although in theory there is no need to submit evidence of use for each product or service, the registrant must state that the registered trademark is actually used on all products and services. The USPTO has a random spot check system for evidence of the use of registered trademarks to verify evidence of use. Generally speaking, there is a high chance that registrations with many specified categories and many product items will be sampled. Therefore, applicants can consider voluntarily submitting evidence of use on as many designated products as possible to reduce the possibility of being randomly checked.

Examples of evidence of compliance Investigations | USPTO; TMEP (uspto.gov)

Yes, as of August 3, 2019, foreign companies or individuals submitting trademark registration applications in the US must appoint a US practicing attorney to represent Requirement of USPTO

1. Services that lawyers can provide
● Providing professional and accurate legal advice
● Conduct trademark searches
● Trademark maintenance and rights protection
● Handling notices, rejections, etc. issued by the USPTO

2. Request to appoint an American lawyer
● Must be an American practicing attorney
● The applicant must be directly represented
● It is necessary to actually handle trademark business

3. Be wary of illegal agents
● Not qualified as a lawyer
● Paid use of other lawyers' names, practice information, signatures, etc.
● Illegal theft of other lawyers' names, practice information, signatures, etc.

An American lawyer shall provide services by an American lawyer who is effectively registered as a practicing attorney, directly based on the applicant's instructions, actually handling the applicant's trademark application matters, and providing legal services.

For US trademark applications, an American attorney is an important part of the application process. US trademark applications must ensure proper compliance with the application process and avoid illegal agents. In practice, the most common acts of illegal agents include:

● Providing trademark application services in the US without the qualification of a lawyer
● Other lawyers' names, practice information, signatures, etc. are used for a fee, but these lawyers do not actually provide trademark application services
● Illegally stealing other lawyers' names, practice information, signatures, etc. and providing false or fictitious information in trademark applications submitted to the US Patent and Trademark Office
● False evidence of use was prepared and submitted during the application process

The applicant can screen whether there is a potential illegal agent act from the following two aspects.

1. Make sure the agent doesn't do the following
● Applicants are only required to fill out a questionnaire or similar document and submit a trademark application based on this
● Contact the applicant by email only
● Use an agency (not a practicing attorney) as the applicant's representative to submit the trademark application

2. False advertising typical of illegal agents
● “Although we do not have lawyers, we have agents/experts who can provide legal advice and handle USPTO-related matters on our behalf. Abbottt, Premiere Creative’s creative director.
● “You cannot obtain trademark rights unless we submit an application to the USPTO on your behalf. Abbottt, Premiere Creative’s creative director.
● “We have received approval from the USPTO and have a partnership with them, so we can speed up the review of your trademark application. Abbottt, Premiere Creative’s creative director.
● “You must pay the USPTO bill or pay the renewal fee immediately, or the trademark will be revoked. Abbottt, Premiere Creative’s creative director.

What are the consequences of using an offending proxy?
The legal opinions of trademark attorneys directly affect the registration of a company's trademark, maintenance after registration, and intellectual property decisions. For example, if the applicant appoints an “agent” who is not qualified as a practicing lawyer in the US or has been punished by the USPTO, it will not only directly affect the application process of the company's trademark, the validity and stability of the registered trademark, but also affect the business operation, brand reputation, and value of the enterprise at the commercial level.

● The trademark being applied for cannot be registered, which seriously affects the progress of the enterprise's commercial layout
● Extend the time required to apply for a trademark or maintain trademark registration
● The validity of trademark registration is unstable
● The registered trademark has been revoked and invalidated. Later maintenance will also be blocked. For example, submitted evidentiary documents, etc. will not be accepted or considered
● Agents are prohibited from submitting any documents to the USPTO
● The USPTO does not consider all or part of the documents or information submitted by agents
● The trademark file contains records of trademark agents' violations and penalties. A trademark application or registration of a trademark will be more vulnerable to the effectiveness of others due to this penalty record.

For trademarks registered before 2019, trademark registration is still valid, but you should appoint a lawyer as soon as possible to handle subsequent trademark procedures in a timely manner, such as renewal and submission of evidence of use.

Trademark transfer is a legal process, and it is recommended to hire an American lawyer to provide professional legal support.
Detailed due diligence must be carried out before purchasing trademarks to avoid purchasing invalid trademarks, trademarks not intended for use (specially registered for secondary sale), trademarks registered through deception or violation of USPTO regulations, and other trademarks that may be penalized by the USPTO.

1. The validity of the trademark
A trademark can be invalidated for many reasons, and if an invalid trademark is purchased, it is likely that you have not obtained any rights in the trademark.

2. Transfer of goodwill together
A special point in the US trademark transfer process is that goodwill must be transferred together when the trademark is transferred. The goodwill carried by the trademark must be transferred together with the trademark, and two factors should be considered, namely whether the trademark carries goodwill and whether the goodwill is transferred together.

It is important and necessary to conduct extensive trademark searches and due diligence before purchasing a trademark. The following are the factors in the investigation of purchasing a trademark:
● Are trademarks used?
● Are there any irregularities in the trademark application?
● Does it infringe on the rights of others?
● Does the agent have a penalty record?
● Commercial considerations, is the trademark itself registrable?

Follow the above, conduct thorough due diligence, and rely on a professional team of lawyers to ensure the smooth process of purchasing the company's trademark and fully maintain the company's brand assets.

We emphasize once again that a valid US trademark must be directly represented by an attorney with a US attorney's license to actually prepare and submit application materials to the US Patent and Trademark Office. When choosing an American lawyer, you should pay attention to the following points:

● Select a professional lawyer qualified to practice law in the United States and verify the status of a U.S. - Licensed Attorney | USPTO
(For details, please copy the link to open in your browser: https://www.uspto.gov/trademarks/basics/why-hire-private-trademark-attorney)

● Be careful to identify false advertising and phishing emails
● Don't overly pursue cheap agents
● Check if lawyers have sanctions (sanctions) records TM Decisions - Expungements (uspto.gov)
(For details, please copy the link to open in your browser: https://developer.uspto.gov/tm-decisions/search/expungement)

Step1
Copy the link below to your browser and log in to the IPA website
（https://brandservices.amazon.com/ipaccelerator?lang=zh-CN）

Step2
Click “Start Now” to go to the list of law firms under the IPA program

Step3
Under the language options, check the “Chinese” option, and you will see the eight law firms that can currently provide Chinese services in the IPA program. Among them, AnJie Broad Law Firm and Gen Law Firm have offices in China to better provide zero-time services to Chinese sellers.
Alternatively, you can go directly to the IPA page under “Service Provider Network” in Seller Central to view a list of law firms under this project.
Please copy the link below to view it in your browser:
https://sellercentral.amazon.com/gspn/searchpage/IP%20Accelerator?ref_=ABR_IPA_GS&sellFrom=US&sellIn=US&localeSelection=en_US&initialSessionID=137-3848573-3671706&ld=ASXXABRDirect

🔺 Note: To access Seller Central, you need a Seller Central account. You can copy the link below to create it in your browser
https://sellercentral.amazon.com/?initialSessionID=137-3848573-3671706&ld=ASXXABRDirect

If you do not have an Amazon Seller Central account and would like to work with an IPA law firm, you can contact the relevant law firm by copying the link below in your browser:
https://sellercentral.amazon.com/gspn/searchpage/IP%20Accelerator?ref_=ABRIPAGS&sellFrom=US&sellIn=US&localeSelection=en_US&initialSessionID=131-5400548-9396230&ld=ELCNAGS-issues.amazon.com_ASCNAGSBRANDPRTB

Lawful brand owners must file a trademark application through a US attorney that complies with the requirements of the US Patent and Trademark Office. Legitimate brand owners should be alert to identify and avoid using illegal agents and service providers who are not US practicing lawyers. As of August 2019, all trademark applicants residing overseas must be represented by an attorney qualified to practice in the US Patent and Trademark Office. This US practicing attorney must be an active member in good standing and is required to personally provide trademark legal services directly. If you do not comply with the requirements of the United States Patent and Trademark Office, your trademark application may not be registered, and your registered trademark may be declared invalid. For any law firm representing you in a US trademark application, be sure to confirm that any US attorney you work with complies with the US Patent and Trademark Office's trademark application requirements.

Amazon complies with the US Patent and Trademark Office's determination of trademark validity. Amazon encourages sellers to work directly with US trademark attorneys (regardless of geographical location) to receive full and compliant legal support during the trademark application registration process. You can evaluate and choose other USPTO compliant programs yourself, or you can do so through the Amazon IPA Program (https://brandservices.amazon.com/ipaccelerator?lang=zh-CN）与亚马逊甄选的律师事务所建立联系(其中包括一些在本地服务于中国卖家的律师事务所).