In order to expand business to
the world market, the company should prepare the legal foundations before
entering the foreign market or launching any products or services in another
country. Many Vietnam companies aims to enter US market but there are
opportunities and challenges. One of our many issues are legal risks in
intellectual properties protection law of the US. It is suggested the
Vietnamese companies to consult with IP lawyers in Vietnam and US to register trademark and
clear off such legal issues before launching products in the US.
When submitting for trademark registration in USA, individuals or enterprises
need to comprehend its procedures to make the most reasonable choice.
Authority
The Vietnamese individuals and
enterprises may directly file the dossiers for registration of US trademark to
United States patent and trademark office (USPTO) or via Madrid System with US
designation. However, if Vietnamese individuals and enterprises are not
resident or do not have office in US choose to directly file the dossiers to
USPTO, they must submit dossiers via a licensed US IP agent.
The required dossiers
include:
-Trademark sample;
-Applicant’s information;
-Registration of goods/services;
-Filing basis.
Besides, based on each below
filing basis, different dossiers would be required.
According to US Law, to the
direct registration, applicant needs to file on following four basis:
1.Registration on the
basis of Section 1(a). Accordingly, applicant will file the registration for
the mark that already used in commerce in USA
On this basis, the applicant or
their representative files used trademark application to USPTO. After 3 months
from the filing date, the examiners will examine the dossiers to consider if it
satisfies the protected criteria.
-If the examining attorney does
not find grounds for refusing to register the trademark, and the application
satisfies all legal requirements, the trademark will be approved for
publication in the USPTO’s Trademark Official Gazette (TMOG) within one month
for opposition. If there is no opposition or it is already resolved in
regulated duration, then USPTO registers the trademark. Before the end of the
first six-year period after the registration date, or within six months of the
expiration of the sixth year with an additional fee, the applicant must file a
Declaration of Use or Excusable Nonuse to keep the trademark alive. Besides,
within one year before the end of every 10-year period after the registration
date, or within six months of the end of the 10-year period, the applicant must
file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal.
-If the examining attorney
finds grounds for refusing to register the trademark, or if the application does not
satisfy all legal requirements, the examining attorney issues a letter (office
action) explaining those refusals and/or requirements. The applicant must
respond to the office action within six months of the date it was issued. (i)
If the applicant does not respond within regulated period, the USPTO will sent
to the applicant a Notice of Abandon (ii) If applicant responds in regulated
time and USPTO considers it is reasonable, USPTO then approves the application
and publishes it on TMOG for opposition. If there is no opposition or it is
already resolved in regulated duration, then USPTO registers the trademark. If
applicant responds in regulated time and USPTO considers it is unreasonable,
then examining attorney will issue a final action letter. If the applicant
responds in regulated time and examining attorney considers it is reasonable
then USPTO registers the trademark. Via versa, if the applicant do not respond
in time, the application will be abandoned.
2.Registration on the
basis of Section 1(b). Accordingly, for application based on intent to use the
trademark in commerce
Basically, the procedure in
this case are almost the same as filing basis 1(a). However, after USPTO
approves the application and publishes on TMOG, USPTO then will issue a Notice
of Allowance (NOA) instead of registering the trademark. A NOA is not a
registration, but means that the trademark made it through the 30-day
opposition period and will be allowed to register after the applicant timely
files an acceptable Statement of Use (SOU). The deadline to file an SOU or
request for extension of time to file an SOU (extension request) is calculated
from the date the NOA issued. If applicant does not file an SOU or extension
request within six months of the NOA date, the application will abandon.
3.Registration on the
basis of Section 44(d). Accordingly, for application based on a foreign
application within 6 months from the date of filing in other countries
After the application is
submitted, if the examining attorney does not find grounds for refusing to
register the trademark, and the application satisfies all legal requirements,
he or she issues a suspension letter stating that no further action will be
taken on the application until we receive the foreign registration certificate,
as required for a herein Section 44(e) registration basis.
If the examining attorney finds
grounds for refusing to register the trademark, or if the application does not
satisfy all legal requirements, the examining attorney issues a letter (office
action) explaining those refusals and/or requirements.
-In case there is no response
from applicant, the application will be abandoned.
-In case the applicant has
reasonable response and be accepted, USPTO will issue suspension letter. If
USPTO has not received the required foreign registration certificate for the
Section 44(e) basis, the examining attorney will issue a letter inquiring about
the status of the foreign application (whether it has registered yet). A
suspension inquiry letter will be issued every six months until the applicant
submit the foreign registration certificate. (i) If the applicant do not
respond to the inquiry from USPTO, the application will abandon (ii) If the
applicant responds in accordance with providing foreign trademark certificate,
there will be the following situations:
a.In case USPTO accepts the
foreign trademark certificate and the examining attorney does not find grounds
for refusing to register the trademark, and the application satisfies all legal
requirements, USPTO then approves the trademark and publishes it on TMOG for
opposition. If there is no opposition or it is already resolved in regulated
duration, then USPTO registers the trademark;
b.In case USPTO accepts the
foreign trademark certificate, however, the examining attorney finds grounds
for refusing to register the trademark, USPTO will issue the action letter. (i)
If the applicant does not respond within 6 months, the application will be
abandoned (ii) If the applicant responds within 6 months, the response will be
considered: In case USPTO considers the response is reasonable, the application
will be approved and published for opposition, if there is no opposition or the
opinion has already been resolved, the trademark with be granted certificate;
in case USPTO considers the response is unreasonable, the applicant may
continue to respond to Trademark Trial and Appeal Board (TTAB).
-In case USPTO does not accept
the foreign trademark certificate, USPTO will issue notification and clearly
state the reason. The applicant has 6 months to respond to the notification,
otherwise, the applicant will be abandoned.
4.Registration on the
basis of Section 44(e). Accordingly, for application based on a foreign
trademark certificate, there are two cases as following:
-The application satisfies the
requirements and USPTO publishes on TMOG for opposition;
-The application does not
satisfy the requirements and USPTO issues the notification and clearly states
the reason.
The procedures and duration for
applicant and third parties have opinions are the same as above cases. After
the trademark certificate is granted, the applicant needs to submit SOU and pay
the fee to maintain.
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