Filing and Prosecution USA, China

Question 1

Why is it important file in the us?

Answer 1

It is the worlds largest economy

Question 2

What are the three ways to obtain trade mark protection in the US?

Answer 2

-simply using a trade mark (common law rights)
- state trade mark registrations
- federal trade mark registrations (national, international- Madrid protocol) on

Question 3

Who may apply for a US TM?

Answer 3

It is necessary to have legal personality (ability to be sued) to own a US mark. The US does not have restrictions on nationality.

Question 4

What bases must USTM have?

Answer 4

They must have one or more bases to them. Except 66;a) which is a standalone base. M MM
-section 1(a) - use in commerce base (currently using the mark)

• section 1 (b) intent to use basis ( intention to use in the near future)
• section 44( d) foreign priority bases
• section 66(a) - designation of the US in an international registration.

Question 5

What language are USTM filed in?

Answer 5

English

Question 6

What is a collective membership mark?

Answer 6

Are used with the sole purpose of indicating membership of a collective group.

Question 7

What classification system does the US use?

Answer 7

International classification system

Question 8

What must be claimed for a US priority filing?

Answer 8

Usual 6 months from first filing, application date/ number country and section 44. (d) will need to be claimed as bases for the priorty claim.

Question 9

What must a US filing include?

Answer 9

Name of applicant
Name and address for correspondence
Clear representation of the mark
Specification
Filing fee for at least one class

Question 10

Fees for filing a US TM

Answer 10

Standard - 350 per class
Plus - 250 per class

Question 11

How long does examination take at the USPTO?

Answer 11

Currently, usually around 8.5 months after filing

Question 12

What is the deadline to respond to examination (office actions) in the US?

Answer 12

There is a 3 month deadline with a 3 month extension available to respond.

Question 13

What type of registers are USTMs registered in?

Answer 13

• principle
  Supplemental (rare to file on the supplemental register in the initial application and they offer far less protection

Question 14

What is the opposition period for a USTM?

Answer 14

Notice of opposition must be filed within 30 days after the date of publication.

The time limit can be extended

Question 15

What happened after publication in the US?

Answer 15

This depends on the basis of the application.
Applications under section 1(a) use in commerce applications will now be registered.
Applications under section 1(b) intent to use applications will have a notice of allowance issued (NOA) this means the TM will be allowed once a statement of use is filed. There is a 6 month deadline that is extendable for further periods of 6 months upto a maximum of 30 months.

Applications under section 44(d) cannot be registered on the basis of section 44 (d) alone however if the priorty application is from your country of origin and it is now registered then a section 44(E) foreign registration basis can be added to your application.

Applications under section 44(E) foreign registration basis applications will now be registered once a copy of the foreign registration is filed replying on 44(E) and a foreign registration avoids the requirement to be using the name and to submit a statement of use.

Question 16

What maintenance is due on a USTM?

Answer 16

You must submit DOU between the fifth and sixth anniversaries of registration and between the 9th and 10th anniversaries of registration along with the registrations renewal.