Author: Xiaoqing, International Process History
There are three ways to apply for a trademark in the United States under the single country approach: intended use 1a, actual use 1b, and foreign registration 44e. Of course, the application can be submitted based on multiple foundations simultaneously, but it must meet the requirements of each foundation applied for. The applicant can choose which method to submit based on their actual situation.
(1) Differences in Concepts
Intention to use "refers to the intention (preparation) of a registered trademark to be used in the United States. When the applicant submits the application, they state their intention (preparation) to use the trademark in the United States and specify which products or services they will use the trademark for.
◆ Already in use "refers to the actual commercial use of a registered trademark in the United States, and the application can only be made for goods or services that have actually used the trademark.
◆ Foreign registration refers to the applicant for a US trademark having a valid registration in a contracting country outside the United States.
The above three foundations can all require additional priority, provided that it is declared that only priority is required and the registration process is not based on foreign registration. Otherwise, the registration process cannot continue.
(II) Differences in Registration Procedures
◆ Intended Use: Application - Acceptance - Formal Review+Actual Review - Announcement - Approval Notice - Submission of Time and Evidence of Use - Registration
◆ Actual use: Application - Acceptance - Formal review+Actual review - Announcement - Registration
◆ Overseas registration: Application - Acceptance - Formal review+Actual review - Announcement - Registration
The above program is only available for registration under smooth circumstances.
(III) Differences in registration time
◆ Intentional use is the longest registration process among all application methods, as there is an additional stage of approval notification and 6 months to submit usage time and evidence. If the application is not rejected or extended due to usage evidence, registration can be completed in about 16 months under normal circumstances.
◆ The actual usage is about 10 months.
◆ Overseas registration takes about one month earlier than actual use, and overall it takes about 9-10 months.
(4) Different materials required for application
| Intended use | Actual use | Foreign Registration |
| Trademark sample | Trademark sample | Trademark sample |
| Applicant's name and address | Applicant's name and address | Applicant's name and address |
| Category and Product Items | Category and Product Items | Category and Product Items |
| zip code | zip code | zip code |
| Entity Type | Entity Type | Entity Type |
| nationality | nationality | nationality |
| Applicant's email | Applicant's email | Applicant's email |
| Time of first use in the United States and globally, evidence of use in the United States (not required at the time of application, but still needs to be converted to actual use during the pre registration approval period) | Time of first use in the United States and globally, evidence of use in the United States | Foreign registration certificate and English translation (if changed, transferred, or renewed, this certificate and English translation are also required) |
(V) Differences in review stages and content
Due to different basic stages and the materials provided when submitting the application, the content of the review may vary at different stages.
| Application | different | the same |
| Actual use | When applying for actual use, it is necessary to provide evidence of use in the United States, so this item needs to be reviewed more than intended use at this stage of the application | ① Have all basic application materials been filled in, and is the applicant's name consistent with the entity type; ② Whether the product items are standardized; ③ Is the trademark logo clear; ④ Whether the trademark description is accurate and complete; ⑤ Whether the trademark sample specifies a color, and if so, whether the described color is accurate and complete; ⑥ Examination of Relative and Absolute Reasons |
| Intended use | Intention to use: Within 6 months after the objection period, if the applicant submits the usage time and evidence, the official will review this content | |
| Foreign Registration | When applying for foreign registration, in addition to reviewing the same content as above, it is also necessary to examine whether the country of origin of the foreign registration is a contracting state of the United States, whether the foreign registration is valid, whether the information registered abroad is consistent with the information applied for in the United States, and the goods applied for in the United States Does the project exceed the scope of foreign registration |
The different choices of application basis allow applicants to register US trademarks more flexibly. If the trademark for the intended product has not been used or sold in the United States, and the applicant has not registered a prior trademark in their own country (which is a contracting state of the United States treaty), they may choose to apply for the intended use of the trademark; If the trademark of the intended product has been used or sold in the United States, priority may be given to actual use; If there is a prior trademark registration in one's own country (which is a contracting state of the United States treaty) and the trademark for the intended product has not been used or sold in the United States, foreign registration is preferred.
For more international intellectual property issues, please feel free to contact Gaowo Intellectual Property~
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