Master the U.S. Trademark Registration Process: A Complete Guide

Recently, the Forest Shipping editorial team has noticed that many Amazon sellers are facing trademark-related challenges, such as concerns about their trademarks not passing USPTO (United States Patent and Trademark Office) review and confusion over why trademarks submitted by their agents were deemed non-compliant. These sellers are seeking solutions to address these issues. Today, we'll explore common questions and precautions related to U.S. trademark registration to help you navigate the process smoothly and avoid potential pitfalls.

 

 

Attention Amazon Sellers: Legitimate brand owners must submit their trademark applications through U.S.-licensed attorneys who comply with USPTO requirements. If you fail to meet these requirements, your application may be declared invalid. Amazon follows the USPTO's determinations regarding trademark validity. You have the option to evaluate and choose other compliant alternatives as per USPTO guidelines, or you can connect with local law firms that serve Chinese sellers through Amazon’s IP Accelerator (IPA) program.

 

To assist Chinese sellers in successfully registering their trademarks in the United States, we've invited Attorney Cui Hong, who has extensive experience in overseas trademark registration and intellectual property protection, to provide a detailed overview of the U.S. trademark registration process and common issues.

 

Overview of the U.S. Trademark Registration Process

 

1. U.S. Trademark Application Process

 

The USPTO is the governing authority for trademark applications in the United States. Given the requirement for evidence of use, specific attention must be paid to various aspects of the U.S. trademark application process, including pre-application preparation, the examination process, and the submission of use evidence. Proper attention to these steps will help you avoid unnecessary detours and ensure a smooth application process.

 

1.1 Pre-application Preparation

Before applying for a trademark in the U.S., applicants must confirm details such as the trademark itself, the goods or services it will cover, and the applicant's name and address. Special consideration should also be given to the trademark's current or intended use. Thorough preparation of this information lays a solid foundation for the application process, timeline, and compliance.

 

1.2 Application and Examination Process

Applicants must submit their trademark applications to the USPTO through a U.S.-licensed attorney. A USPTO examiner will conduct a comprehensive review of the application. If there are no grounds for refusal, the trademark will be published for opposition.

 

Currently, due to the USPTO's high caseload, the average time from application submission to examination completion and publication is about 10-15 months, with some cases taking longer. The U.S. trademark opposition period is 30 days, though extensions can be requested, extending the total opposition period to 180 days.

 

If no opposition is filed within this period, and the use requirements are met, the trademark application will generally proceed to registration.

 

1.3Application Basis

U.S. trademark registration follows a "first-to-use" principle, requiring evidence of use. Additionally, the applicant's genuine intent to use the trademark at the time of application is considered. Therefore, different bases for U.S. trademark applications exist, and applicants can choose one or more depending on their situation. However, modifying the application basis later may result in additional costs.

 

Application Basis	Applicable Scenario	Required Documents/Information	Registration Period
Actual Use Section 1(a)	Already in commercial use	Actual use evidence; two earliest use dates	12-18 months
Intent to Use Section 1(b)	Not yet in commercial use but has a genuine intent to use	Notice of Allowance (NOA) received; 6 months to submit SOU; can be extended up to 5 times	14-24 months; final registration within 4 years
Foreign Registration Section 44(e)	Registered in a foreign country for corresponding goods/services	Foreign registration certificate with English translation	12-18 months
Foreign Application Section 44(d)	Filed a corresponding application in a foreign country	Priority claim (if applicable); foreign application and translation	12-18 months
Extension of International Registration Protection Section 66(a)	Registered in a foreign country for corresponding goods/services, or has an international registration based on a foreign application	International registration number or basic application number	14-24 months

 

• 1(a) Actual Use in Commerce: For trademarks already in use in the U.S., evidence of use must be submitted with the application. If no opposition is filed after publication, the trademark can be registered.
• 1(b) Intent to Use: For trademarks not yet in use in the U.S. but with a genuine plan for use. After the opposition period ends, the applicant must submit evidence of use to prove that the trademark has begun to be used in the U.S. Once the evidence is accepted, the trademark will be registered. Applicants can request up to five six-month extensions to submit use evidence.

         Note: 1(a) and 1(b) application bases cannot be used simultaneously for the same goods or services within a single trademark application.

• 44(e) Foreign Registration: For trademarks already registered in another country. Applicants must submit the foreign registration certificate before registering the trademark in the U.S. The U.S. application must align with the foreign registration, and the scope of goods or services cannot exceed that of the domestic registration. Multiple domestic registrations can serve as the basis for a single 44(e) application. Ensure the domestic trademark registration is successful before choosing 44(e) as the application basis.

 

Applications based on Sections 44 and 66 of the U.S. Trademark Act require a declaration of intent to use the trademark in the U.S. but do not require evidence of use at the registration stage. However, these registrations are at a higher risk of cancellation for non-use after three years. In contrast, trademarks registered under 1(a) or 1(b) face a lower risk of cancellation since evidence of use is submitted before registration.

 

1.4 Evidence of Use Requirements

In the U.S. trademark application process, and during post-registration maintenance and renewal, applicants must submit a statement of use along with evidence to prove the continuous, genuine use of the registered trademark. Failure to submit acceptable evidence may affect the trademark's validity.

 

The USPTO's Trademark Manual of Examining Procedure (TMEP) requires at least one piece of evidence per class, but examiners may request additional evidence. Given the increasingly stringent review process, applicants should proactively provide comprehensive evidence. Therefore, applicants should plan their U.S. trademark strategy based on actual brand use and commercial expansion plans, applying as needed and avoiding a "trademark-first" approach.

 

It’s also important to note that during the 5th-6th year and 10th year of trademark registration, even though evidence for each good or service is not required, registrants must declare that the registered trademark is in actual use for all goods and services. The USPTO has a random audit system for use evidence, especially for registrations with multiple goods or services. To reduce the likelihood of an audit, applicants may consider proactively submitting evidence for multiple goods.

 

Product Evidence	Service Evidence
Physical Photos: Showing the trademark on the product	Catalogs, Brochures: Displaying the trademark and advertising the services
Product Packaging Labels: Displaying the trademark and the product	Retail Store or Restaurant Signs: Clear images showing the trademark
Product Catalogs, Brochures: Product images, trademark appearance, product descriptions	Advertisements, Invoices, Business Cards: Showing the trademark and services provided
Website Evidence: U.S. accessible, includes product description, displays trademark, offers purchase method, shows URL, and print date	Service Vehicles: Clear images showing the trademark on vehicles like delivery trucks
Software (App) Products: Virtual products - Official website or app store (App Store, Google Play) available for download, displaying trademark	Website Evidence: U.S. accessible, any website displaying the trademark and services, shows URL, and print date

 

U.S. Trademark Registration FAQs

 

1. Is it mandatory to hire an attorney for U.S. trademark applications?

   Yes, since August 3, 2019, foreign businesses or individuals must hire a U.S.-licensed attorney to submit trademark registration applications in the U.S.

   1) Services provided by attorneys include:

• Offering professional and accurate legal advice
• Conducting trademark searches
• Managing trademark maintenance and protection
• Handling USPTO notices, refusals, and other communications

 

   2) Requirements for U.S. attorneys:

• Must be licensed to practice law in the U.S.
• Must directly represent the applicant
• Must be actively involved in handling trademark matters

 

   3) Beware of unauthorized agents:

• Those without a legal license
• Those who use another attorney's name, credentials, or signature for a fee
• Those who illegally use another attorney's name, credentials, or signature

   U.S. attorneys should be licensed to practice law in the United States and must personally handle the applicant's trademark matters and provide legal services.

 

2. How can unauthorized agents be identified?

   The role of a U.S. attorney is crucial in the trademark application process. Ensuring the process is legal and compliant is essential to avoid unauthorized agents. Common unauthorized practices include:

• Offering trademark services without a law license
• Using another attorney's name, credentials, or signature for a fee, without actually providing trademark services
• Illegally using another attorney's name, credentials, or signature to submit false or fabricated information to the USPTO
• Creating and submitting false evidence of use during the application process

 

   Applicants can identify potential unauthorized agents by checking for the following red flags:

• The agent only requires the applicant to fill out a questionnaire or similar document to submit a trademark application
• The agent only communicates with the applicant via email
• The agent submits the trademark application on behalf of the applicant using the agent’s company name rather than the attorney’s name

 

   Typical false advertising by unauthorized agents includes:

• "Although we don't have attorneys, we have agents/experts who can provide legal advice and handle USPTO matters on your behalf."
• "You cannot obtain trademark rights unless we submit the application to the USPTO on your behalf."
• "We are approved by the USPTO and have a cooperative relationship with them, allowing us to expedite your trademark application review."
• "You must pay the USPTO's invoice or renew your trademark immediately, or it will be canceled."

 

3. What are the consequences of using unauthorized agents?

   The legal advice provided by trademark attorneys directly affects the registration, maintenance, and intellectual property decisions of a business. If an applicant uses unauthorized agents or agents penalized by the USPTO, it can negatively impact the application process, the validity of registered trademarks, and the company's business operations, brand reputation, and value.

 

   Consequences of using unauthorized agents include:

   - The trademark application may not be registered, severely affecting the business's commercial strategy.

   - Prolonged timeframes for trademark application or registration maintenance.

   - Unstable validity of registered trademarks.

   - Revocation or invalidation of registered trademarks. Post-registration maintenance, such as the acceptance of submitted evidence, may also be affected.

   - The agent is prohibited from submitting any documents to the USPTO.

   - The USPTO may disregard some or all documents and information submitted by the agent.

   - The trademark file may record the agent's violations and penalties. The trademark application or registered trademark may be more susceptible to challenges due to these penalty records.

 

4. What should I do if my previously registered trademark did not involve an attorney?

   Trademarks registered before 2019 remain valid, but it is advisable to promptly hire an attorney to handle subsequent processes, such as renewals and the submission of evidence of use.

 

5. What should I be aware of when acquiring trademarks?

   Trademark transfers are legal procedures that require professional legal support. Before purchasing a trademark, thorough due diligence is necessary to avoid acquiring invalid trademarks, trademarks registered without intent to use (e.g., for resale), or trademarks obtained through fraudulent means or in violation of USPTO regulations.

 

1.    Trademark Validity: Trademarks can be invalidated for various reasons, so purchasing an invalid trademark may result in no rights being acquired.
2.    Goodwill Transfer: In the U.S., a special requirement during the trademark transfer process is the transfer of goodwill along with the trademark. The goodwill associated with the trademark must be transferred together with the trademark, considering whether the trademark carries goodwill and whether the goodwill is included in the transfer.
3.    Due Diligence: Before purchasing a trademark, extensive trademark searches and due diligence are essential and necessary. Consider the following factors when investigating a trademark purchase:

• Is the trademark in use?
• Are there any violations in the trademark application?
• Does the trademark infringe on the rights of others?
• Does the agent have a record of penalties?
• Considerations related to the trademark's registrability.

 

   Following these guidelines, conducting thorough due diligence, and relying on a professional legal team can ensure a smooth trademark acquisition process and fully protect the company's brand assets.

 

We emphasize once again that valid U.S. trademarks must be directly represented by a U.S.-licensed attorney who personally prepares and submits the application materials to the USPTO. When selecting a U.S. attorney, keep the following points in mind:

1. Choose a professional attorney with U.S. licensing credentials and verify the attorney's identity [Hiring a U.S.-licensed attorney | USPTO;]

1. Be vigilant about identifying false advertising and phishing emails.

• Avoid excessively low-cost agents.
• Check whether the attorney has any sanction records [TM Decisions - Expungements (uspto.gov)].

 

 

You can also explore the list of law firms providing Chinese-language services through the Amazon IPA program by following these steps:

 

Step 1: Copy the link below into your browser and log in to the IPA website.

[https://brandservices.amazon.com/ipaccelerator?lang=en-US]

 

Step 2: Click "Get Started" to access the list of law firms under the IPA program.

Step 3: Check the "Chinese" option under the language selection to view the eight law firms currently providing Chinese-language services through the IPA program. Among them, AnJie Broad Law Firm and Gen Law Firm have offices in China to provide better round-the-clock service to Chinese sellers.

Alternatively, you can also visit the "Service Provider Network" section in the Seller Central platform and view the list of law firms under the IPA program.

 

Finally, Amazon's legal department reminds all sellers once again:

 

Legitimate brand owners must submit their trademark applications through U.S.-licensed attorneys who meet the requirements of the USPTO. Legitimate brand owners should remain vigilant and avoid using unauthorized agents or non-U.S.-licensed service providers. Since August 2019, all trademark applications filed by overseas applicants at the USPTO must be represented by an attorney who is licensed to practice law in the United States and is in good standing. This U.S.-licensed attorney must personally provide trademark legal services. Failure to comply with USPTO requirements may result in your trademark application being denied or an already registered trademark being declared invalid. For any law firm representing your U.S. trademark application, be sure to confirm that any U.S. attorney you work with complies with USPTO trademark application rules.

 

Amazon adheres to the USPTO's determination of trademark validity. Amazon encourages sellers to work directly with U.S.-licensed trademark attorneys to obtain full and compliant legal support during the trademark application process. You can evaluate and choose other compliant options in accordance with USPTO regulations, or you can connect with law firms serving Chinese sellers through Amazon’s IPA program (which includes some law firms that provide services to Chinese sellers locally).