How Vietnamese Companies Could Register Trademark in USA?

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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