US trademark application preparation materials
pine patent
August 1, 2024
If you are planning to export or are currently exporting, securing trademark rights in the export country is essential for stable exports. To assist you, we would like to share information based on successful cases handled by Pine Patent Law Office, covering the required documents for US trademark applications, the process for registering a trademark in the US, and how to search for US trademarks. Companies planning or currently engaged in overseas exports can use this content to lay the foundation for successful US trademark registration and stable exports.
The United States follows the principle of "use" for trademarks, meaning that, in principle, a trademark must be used in the US to be registered. Therefore, if the trademark is not used or intended to be used in the US, registering it merely to secure a priority right is generally not allowed. Furthermore, once registration is granted, evidence of use must be submitted (with some exceptions), and a specimen of use/declaration of use in the US must be filed between the fifth and sixth years after registration to maintain the trademark. Additionally, a renewal application with evidence of use in the US must be filed between the ninth and tenth years. The US places great importance on the "use" of trademarks, and the regulations concerning this principle are becoming stricter.
Under this "use" principle, the required documents for US trademark applications differ slightly depending on the situation. The common requirements and specific differences are summarized as follows:
US patent offices or US patent attorneys refer to your situation as the "filing basis." Prepare the required documents according to your situation below.
If the trademark is already in use in the US:
Submit a specimen of use (trademark attached to goods, sales receipts, advertising materials, etc.)/declaration of use (first use date/first commercial use date) along with your US trademark application. Prepare the common requirements and the specimen of use/declaration of use and contact a domestic or overseas patent office. This situation has the simplest documentation requirements.
If the trademark is not yet in use in the US but will be:
After the trademark application, submit a specimen of use/declaration of use (trademark attached to goods, sales receipts, advertising materials, website screenshots, etc.) within six months after the trademark is approved in the US to receive registration. If the use in the US is delayed, making it difficult to prepare evidence of use, this period can be extended up to five times in six-month increments (note that extension fees can be considerable, so it's best to submit promptly). If there are no specific plans to use the trademark in the US within one year of submitting the specimen of use/declaration of use, consider case 3 below.
If there is a registered or pending trademark in a foreign country (excluding the US):
If you have a registered trademark in a foreign country (regardless of how long ago it was registered) or a trademark application filed within the last six months, you can claim priority while filing for a US trademark. The trademark must be identical, and the goods/services designated in the US must be supported by the foreign application/registration. This filing basis does not require evidence of use. However, if the trademark is registered overseas after claiming priority, the original registration and its translation must be submitted to receive registration in the US. If the priority application in the foreign country is not ultimately registered, the filing basis may need to be changed during the examination of the US application. Prepare the common requirements, the original registration, and the translation from the foreign country to apply for a US trademark.
These are the required documents for a US trademark application. It is crucial to explain your current business situation and future plans to the current agent and choose the most advantageous filing basis considering potential overseas expansion periods.
