Understanding of US Trademark Law to Avoid Losing Brand Name in the US Market

Email: vinh@bross.vn

An increasing number of brand names of Vietnamese enterprises such as Pho Thin 13 Lo Duc and ST25 rice recently squatted in the US may attract you to eye the US trademark law with interest. Please bear in mind that the US trademark law and practice are like no other. Our article (recently published by the Vietnam Investment Review (VIR)) may help you explore the US uniqueness in registering a brand name, namely a requirement of option of one of 5 filing bases for trademark application, or twice required submission of evidence of use in the first 10-year validity term regarding your trademark granted by the USPTO.

What is a Trademark under the Laws of the US?

Similar to Vietnamese law, trademarks in the US are basically also defined as signs used to distinguish goods and services of different organizations and individuals. Different from the IP Law of Vietnam where only visible signs such as letters, words, drawings, images, including hologram or a combination of elements are protectable, the US also grants protection for invisible marks such as taste or sound marks.

Two Ways of Registration and the Useful Trademark Electronic Search System (TESS)

You can choose one of two ways to apply for trademark registration in the US: (a) to apply directly to the USPTO through a US law firm, which is called as "national registration"; or (b) to apply indirectly to the USPTO by using the Madrid Protocol, which is known as "international registration”.

The US legislation requires that a protectable trademark must simultaneously satisfy both of the two conditions: (a) it has function of distinguishing source of commerce amongst same types of goods/services; and (b) it is not confusingly similar to the other’s trademarks registered or earlier used in the marketplace in the US.

A free searchable trademark tool: https://tmsearch.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk can help you make a quick search to identify whether your brand has been filed/registered by another or not. However, assessing possibility of grant of protection of your brand in the US usually requires specialized skills and practical experience. On case by case basis, thus, you should consult trademark practitioners for his assistance.

Required Option of One of Five Filing Bases

1. Application based on your trademark of Use in Commerce (Section 1A). Where you are currently selling, distributing or adverting a good/service bearing a particular trademark in the US commerce, Section 1A must be chosen. In this case, you must provide: (i) date of the first use of the mark associated with the product selling in the US; and (ii) one specimen of trademark for each class showing how you use the mark in commerce associated with the goods/ services. In 3-4 months, if everything goes smooth, the USPTO approves your trademark and let it publish in 30-day for opposition. If no opposition is filed, a certificate of trademark registration will be issued in 3 months.

2.Application based on your trademark of Intent to Use in Commerce (Section 1B). In the event that you have not yet sold or displayed goods/services in the US, you are still able to file application for registration of your trademark on the ground that you have a bona fide intention to use your mark in commerce in the near future. With using Section 1B, the USPTO examines and approves your trademark in about 3-4 months as usual before publication in 30-day for possible opposition, and without opposition, a Notice of Allowance (NOA) will be issued. In this case, you will have 6-month term to provide with the USPTO a Statement of Use (SOU) and evidence showing that you have started selling goods/services in commerce. Where a SOU is accepted, a trademark registration certificate will be granted.

3. Application based on your Foreign Registration (Section 44E). You can file trademark in the US by relying upon your ownership of a foreign trademark registration for same trademark used for same goods/services. To use this filing basis, your trademark must have been registered in Vietnam. The USPTO examines and approves your trademark in about 4-6 months before publication in 30-day for possible opposition. In about 3 months after your trademark is published without opposition, a trademark registration will be granted.
4. Application based on your Foreign Application (Section 44D). Where your trademark in Vietnam is still pending less than 6 months until the date of filing the same in the US, you may use Section 44D. The USPTO will suspend examination of the US as-filed application pending your provision of your foreign trademark registration. Only after you have provided a certified copy and translation of certificate of trademark registration in the country of origin, will the USPTO officially grant protection for the US trademark.
5. Application based on your Madrid-based international registration (Section 66A). A Section 66A application is made by your request for extension of protection of your international registration through designating the US in your international application submitted with your home country (eg. Intellectual Property Office of Vietnam, VNIPO) or in a subsequent designation form that is filed with the International Bureau under the World Intellectual Property Organization (WIPO). If no ground of refusal is found, in about 5-6 months from the date of WIPO’s publication, your trademark will be approved and published for possible opposition. And within 3 month after publication without opposition, a US trademark registration will be issued

Post Registration Advisory

In order to maintain the validity of a registered trademark in the US, the US Trademark Act strictly regulates the owner’s obligation to use a mark after registration. Failure to comply with such use requirement will lead the consequence that your registered trademark may be cancelled by the USPTO. Therefore, you should pay special attention to the following deadline to submit Declaration of Actual Use (DAU) to the USPTO:

1. Within one year between the 5th and 6th year anniversaries from the registration date, all trademarks registered under Section 1A, 1B, 44D, 44E or 66A must be maintained with a Section 8 request for the DAU and/or Excusable Nonuse against a maintenance fee.
2. For those trademarks filed under Section 1A, 1B, 44D and 44E, within one year before the expiry of every 10-year anniversary after the registration date, you must file the DAU and a request for renewal under Sections 8 and 9 against a maintenance and renewal fee.
3. In case of a trademark registered under Section 66A and a 5-year DAU was submitted, within one year before the end of every 10-year anniversaries after the registration date, you must submit the DAU under Section 71 and pay applicabel fee, and in the meantime a request for renewal of your international registration wherein includes the United States with the WIPO.

Bross & Partners, a law firm ranked as Tier 1 by the Legal 500 Asia Pacific, specializes in Patent, Design, Trademark and Copyright.

Bross & Partners had experience in trademark litigation in the United States, for instance, we won the case Pho Thin 13 Lo Duc squatted by a Korean individual in early 2021. Should you have any query, please contact us at email: vinh@bross.vn; Mobile: 0903 287 057; WeChat: Vinhbross2603; WhatsApp: +84903287057; Skype: vinh.bross; Zalo: +84903287057.