The United States is a major consumer market where brand protection is essential. Unlike Korea, US practice places particular importance on first use and use in commerce, so filing or registration alone does not resolve every question of ownership or protection.
Additionally, for U.S. trademarks, you can secure rights stably by considering application strategy, grounds for use, method of creating designated goods, post-registration maintenance, and Amazon Brand Registry.
In this article, we will focus on frequently asked questions in practice, from how to apply for a U.S. trademark to registration, maintenance, and use of Amazon Brand Registry.
The biggest feature of the U.S. trademark system
A central feature of U.S. trademark law is the first-to-use principle. Unlike Korea's generally filing-based system, priority in the United States generally depends on earlier use, subject to statutory rules such as constructive use priority.
That is,
- Trademark rights are not always protected simply by registering them first.
- Rights protection becomes stronger only when actual use is implemented.
- If you register but do not use it for a long period of time, it may be canceled.
Therefore, in the United States, it is important to review not only the application strategy but also the actual use plan.
US Trademark Application Process
The general procedure is as follows:
① Application
② Examination begins in about 4 months
③ Office Action Response (if applicable)
④ Publication
⑤ 30-day opposition period
⑥ Submit proof of use (in case of ITU)
⑦ Final registration
If there is no rejection, there are cases where individual applications are generally registered around 9 months, and Madrid international applications are registered around 10 months.
On average, an individual application can take about 1 year, and a Madrid international application can take about 1 year and 3 months.
However, the period may vary greatly depending on delays in examination, reasons for rejection, corrections, oppositions, etc.
Application basis to be selected when filing an application
In a U.S. trademark application, you must select a basis for your application.
- Intent-to-Use(ITU)
This basis applies when the applicant has a bona fide intent to use the mark in U.S. commerce. A statement of use must generally be filed within six months after the Notice of Allowance. Up to five six-month extensions may be requested, allowing a maximum of three years from that notice.
- Actual Use(AU)
This basis applies when the mark is already in use in U.S. commerce. The application must include an acceptable specimen showing use of the mark for the identified goods or services. Product labels, packaging, or qualifying sales webpages may serve as specimens, depending on the circumstances.
- Foreign filing basis (§44(d))
A U.S. application filed within six months of a qualifying foreign application may claim priority under Section 44(d). This is a priority basis; registration ultimately requires a valid registration basis, such as a qualifying foreign registration under Section 44(e) or use in commerce under Section 1(a).
- Foreign registration basis (§44(e))
If you have a trademark already registered in a foreign country, such as Korea, you can use it. It is possible to proceed without proof of use at the time of application, but after registration, obligations related to use must be reviewed. In practice, there are cases where §44 and ITU are selected together to diversify the risk.
Application preparation documents
Materials typically prepared for a U.S. trademark application include:
- Applicant Information
- trademark image
- Designated goods and services
- Proof of use (if applicable)
- Foreign application or registration documents (if applicable)
- Priority claim documentation (if applicable)
A power of attorney is generally not required and can be done with an electronic signature.
Why the identification of goods and services matters
The United States is a country where screening for designated good names is quite strict.
For example, generic expressions such as “electronics” may not be accepted.
The identification must specify the actual goods or services; for example, 'cases for smartphones' is more precise than 'smartphone accessories.'
The U.S. Patent and Trademark Office provides the Acceptable Identification of Goods and Services Manual, and it is common to refer to this when writing.
In particular, in the case of international applications in Madrid, product names from multiple countries and US standards must be considered simultaneously, so there are many cases where reasons for rejection are notified due to product name issues.
In practice, there are many cases where a strategy of using Madrid to reduce application costs but making corrections during the examination process is chosen.
How do I apply for a colored logo?
If you apply for a color logo as is, you must file a color claim. However, when making a color claim, the rule is to use within the registered color range.
In order to secure a wider range of rights, there are many cases where color logos are converted to black and white before applying.
However, if color is central to your brand's identity, it may be advisable to examine it individually.
American Use in Commerce
A U.S. trademark does not end with simply registering a trademark. To maintain rights, you must actually use the trademark.
When filing an application, you must indicate whether the product is actually being used (Actual Use) or is intended to be used (Intent-to-Use). If an application is filed for intended use, proof of use and declaration of use must be submitted before registration.
Use must qualify as use in commerce under U.S. trademark law; preparations alone are insufficient.
The following materials may help document commercial activity, but not all qualify as registration specimens. The specimen requirements must be checked separately for the relevant goods or services.
- photos of products sold in usa
- English catalog
- US target website
- US export invoice
- Amazon sales screen
Is registration impossible if there is no usage data?
Not necessarily.
Even if there is currently no U.S. usage data, registration is possible if you file an application based on foreign registration, such as in Korea.
After registration, however, the applicable use and maintenance requirements must be met.
When grounds for rejection of similar trademarks arise
Typical response methods are as follows:
- Delete conflicting products
- Submission of opinion claiming dissimilarity
- Submit a coexistence agreement (Consent Agreement)
In practice, there are cases where a coexistence agreement is submitted after consultation with the other party.
Additionally, the United States is known as a country where communication with examiners is relatively active.
What is a Disclaimer?
If part of the trademark lacks distinctiveness or is of public nature, you may be required to indicate that you do not claim exclusive rights to that part.
For example, if the trademark is “SARANG KOREA”, there is a possibility that a Disclaimer will be requested for the “KOREA” part.
This is a general scheme to increase the likelihood of registration.
You must continue to manage it even after registration
For U.S. trademarks, there is an obligation to submit proof of use even after registration.
For U.S. registrations other than Madrid Protocol extensions of protection:
- 5-6 years after registration: §8 Declaration of use
- 9-10 years after registration: §8 + §9 renewal
- Repeat the same procedure every 10 years thereafter.
Failure to file the required maintenance documents may result in cancellation. Madrid Protocol registrations require Section 71 declarations in the United States, while renewal of the international registration is handled through WIPO.
Recently, the U.S. Patent and Trademark Office has tended to examine declarations of use and evidence of use much more strictly than in the past, so it is important to manage them with a focus on products that are actually used.
Amazon Brand Registry
US trademarks also play a very important role in protecting the Amazon brand. A trademark is required to operate a brand store or utilize various brand protection functions.
Key benefits include:
- Report and block counterfeit sellers
- Protect your brand content
- A+ content
- Brand Analytics
- Advertising service connection
You can also apply for Amazon Brand Registry after applying for a U.S. trademark. When you apply, your U.S. agent will receive a verification code, which you can enter to proceed. You can also take advantage of the Amazon IP Accelerator program.
A US trademark is not a system that simply ends with an application.
It is possible to secure stable rights by considering the selection of application method, basis for use, designated good strategy, review response, post-registration maintenance, and Amazon brand protection.
Because U.S. trademark protection is strongly linked to use and priority of use, the filing strategy should reflect the company's actual business plan.
This article reflects the information available when it was published. Contact us to discuss your circumstances.