The Complete Guide to U.S. Trademark Application/Registration

As the global business environment expands, more domestic companies have entered the U.S. market or are already exporting and selling. At this time U.S. Trademark Applicationand Trademark Registrationis not just a simple 'procedure', Intellectual Property StrategyIt holds very important meaning.

In this column, we have organized essential concepts to know from filing to post-registration management, in line with the latest trends from the United States Patent and Trademark Office (USPTO). Usage Warning/Non-Contention Declaration (§15), Supplemental Register, etc. U.S. Trademark LawUnderstand their unique features and maximize brand value through thorough preparation.

Why should you register a trademark in the United States?

1) Brand Protection in the Global Market

• The United States is the world's largest consumer market. One of these is that brand awareness is directly linked to corporate value.
• If you have identical or similar trademarks, Other companies in the US register firstIf you do, it will inevitably lead to enormous litigation costs and time-consuming consequences.
• Prior registrationBy protecting your brand through this, you can develop a safe and efficient expansion strategy in overseas markets.

2) Trend of Strengthening Intellectual Property Rights

• Due to the impact of various international treaties, including the Korea-US FTA, overseas intellectual property disputes are becoming increasingly complex.
• Pre-register your trademark with the USPTOOnce you do this, you can gain an advantage in various local legal disputes.

3) Investment Attraction and Corporate Value Enhancement

• Venture capital (VC) and angel investors Intellectual property rights (patents, trademarks, etc.)are considered key evaluation indicators.
• Accepted in the global marketTrademark rights that can become a powerful tool can enhance corporate value and bargaining power.

Overview of the U.S. Trademark System: Registration Principle vs. Usage Principle

1) The United States adopts a 'usage-based approach.'

• Registration Principle (Korea & Japan): Rights arise upon trademark registration
• Usageism (USA): If the trademark is actually used (even before registration), rights arise

Therefore, in the United States, trademarks Actual useAlternatively, you must prove your intention to use (ITU) in the near future to apply and register.

- Statement of Use
- 5th~6th Year Oath of Use (§8)
- Indisputability oath (§15)

There are various procedures that require proof of 'use,' so this part should not be overlooked.

2) Common Law and Federal Trademark Rights

• Common Law Rights: Rights are recognized only within the area where the trademark is actually being used
• Federal trademark: Officially registered with the USPTO for protection across the United States

Common law rights have limited scope and are difficult to prove in legal disputes, Federal Trademark Registrationthrough Across the United StatesThe safest way to secure your rights is to do so.

U.S. Trademark Registration Subjects and Special Types of Trademarks

1) Types of Registrable Trademarks

The scope of protection under U.S. trademark law is very broad. Not only words, names, symbols, numbers, sentences, logos, but also the following Special Trademarksare also recognized.

• 3D three-dimensional mark, sound mark, motion mark, color mark, position mark, hologram mark, olfactory mark, touch mark, taste mark, trade dress

2) Product Trademark vs. Service Mark

• Trademarks: A mark used on goods
• Service Mark: A mark used in the service industry

In addition, there are group marks and certification marks, but for general companies, Product TrademarkI Service MarkMost of the time, we focus on that.

Preparations before applying: Reasons for refusal and prior search

1) Trademarks that may be rejected

• Technical Marking: A trademark that directly describes the function or efficacy of a product
• Geographical indication: When using the name of a specific region itself
• General Name (Common Noun): A word already commonly used in the industrial sector
• Government and Public Institution Names Or Immoral and Defamatory MeaningsA trademark containing
• Confusion with someone else's previously registered/used trademark Potential Trademarks

If you fall under these reasons, Rejection at the Screening StageThe probability of it being the case is high. You must thoroughly check before filing.

2) Trademark Search

• USPTO's TESS(Trademark Electronic Search System)Check for the existence of identical or similar trademarks
• Thorough searches can reduce the risk of Office Action (rejection notices) or disputes.
• When needed Patent attorney or American lawyercan greatly reduce the likelihood of failure.

U.S. Trademark Application Process

Post-registration management: Documents submitted every 5~6 years and 10 years

1) Affidavit of Use (Article 8)

• After registration, at the 5th~6th year, and every 10 years Actual use of the trademarkYou must prove that you are doing so.
• Proof of use includes advertisements, sales records, websites, catalogs, etc. Realistic MaterialsSubmit as
• This is the pursuit of the U.S. Trademark Act 'Usage Caution' This is to uphold principles.

2) Affidavit of Incontestability (Article 15)

• After 5 years of registration, assuming the trademark is continuously in use, Indisputability (§15) Statuscan be obtained
• Once submitted, the trademark registration itself Hard to canceland the stability of rights increases.
• Usually, it is submitted together with the §8 Oath of Use in the 5th~6th year, Reducing procedures and costsIt is so.

3) Renewal every 10 years

• U.S. trademark rights 10 years from the date of registrationIt remains valid for the rest of the day, and thereafter Renewed every 10 years
• If you miss the renewal timing, 6-month grace period You can pay my additional fee to make up for it.
• Proof of consistent use is key, and if neglected, Unused for over 3 years Third parties in the city can apply for cancellation of non-use

Difference Between Federal Trademark Registration and Supplemental Registration

1) Principal Register

• crown Powerful ProtectionCommon registration methods provided
• §8, §15, etc. Procedures for Use and Non-DisputeThis further strengthens your rights.

2) Supplemental Register

• When there is a reason for rejection of the main registration, Supplementary registration to develop discernment
• Although the rights are weaker than those of main registration, a certain level of protection can be secured.
• After a certain period of use, once distinctiveness is recognized, Conversion to Main RegistrationYou can try it.

Summary of U.S. Trademark Registration Costs and Processing Time

5 Practical Tips for a Successful U.S. Trademark Application

1. Establishing a clear brand strategy
   
   • Commonly used in the U.S. market English name, logo, sloganAfter finalizing the application,
   • If the logo or name is already in use, Catalog and Website Capture and other proof of use in advance
2. Thorough prior search
   
   • USPTO TESS Search, Google, Through social media and other channels Identical or Similar Trademarks Checking for prior conduct
   • Patent attorneys, U.S. attorneys, etc. Expert Reviewcan significantly reduce the risk of Office Action
3. Detailed description of designated products/services
   
   • Specific sub-items such as "namely" or "consisting of" must be specified
   • If you specify an unnecessarily wide scope, it may increase the burden of proof of use and costs later on.
4. Quick and accurate response during Office Action
   
   • The response period is basic 3 months, up to 3 months extension (additional fee)
   • Abandoned if not responded within the deadline
5. Proof of consistent use after registration
   
   • If not used for more than 3 years Non-use CancellationMay be
   • Websites, transaction statements, advertisements, etc. Proof of UseContinuously retain materials that can be used

Maximizing global brand value through thorough preparation

Since the U.S. market is large, Trademark application and registration procedures are also strictEven after registering once, periodic 'proof of use' is required.

• average 14.6 monthsDuring this process, there may be variables such as Office Actions and oppositions.
• Even after registration Years 5~6 Article 8 Oath of Use, Indisputability Oath (§15), 10-Year Cycle Renewal There are many management points.
• If you have difficulties with main registration, securing protection through a Supplemental Register and then building your recognition is also a good option.

Most importantly, "a trademark is an asset that is presupposed to be used in practice."
Simple RegistrationDon't end it with that, Ongoing use and supporting evidencemust be carefully prepared so that you can assert your rights strongly in future disputes.

For U.S. trademark applications and registrations, join Pine IP Firm!

If you are planning to enter the U.S. market, Pine IP FirmWe will be your reliable partner.

• Preliminary Search and Preliminary Researchfrom Application and Registration Procedures
• American Lawyers Network Perfect response through coordination
• Post-registration management(Written oath, renewal, etc.) Total Intellectual Property Consulting