Introduction

Trademarks in the USA may be registered at the state level or at the federal level.  Federal registration enables claim to be made over the entire US territories and is the preferred choice for foreign trademark owners interested in the US market.

Foreign companies and individuals are eligible to apply for US federal trademark when there is actual use or a real intention to use the trademark in trade with or export to any part of the USA. Or based on foreign application or registration.

Due to the additional fee on proof of actual use or commencement of use for intent-to-use application, most clients only specified the goods and services on actual use basis, thus faster to get registration and the trademark certificate.

 

Fees

The fees for filing US federal trademark application on actual use basis is HK$15,000 for the first class, and HK$10,000 for any additional class included in the same application.  These fees are inclusive of disbursements for a straight-forward application to registration in the absence of complication.  There is no separate charge for the publication, registration and issuance of the trademark certificate. 

Unless the application encounters objection, suggested amendment or opposition, there will not be any additional fee. The chance of objection or opposition can be reduced by choosing an invented word as the mark, or adding a distinctive logo to the mark.

In the event of any objection or suggested amendment by the examiner, the client has the choice of (1) continue to pursue for registration at additional fee according to the complication, or (2) abandon the pending application at no extra-cost. 

In the event of any opposition by third party, apart from our additional fees, the applicant or the opponent who loses or abandons will be liable to pay the legal fees of the other side.

 

Search

Search for existing US federal trademarks or prior applications is HK$2,200 per class.  Pre-application search report is available within 1 week of instruction.

Search is optional at the choice of the client.  If the client’s mark consists of simple logo or common words found in dictionary, search is usually recommended.  On the other hand, if the client’s mark is an invented word, or a complex logo, then the client may take a chance to file the application without search.

 

Timeframe

The process of a straight-forward application for federal trademark normally takes between 6 to 15 months to complete.

Filing receipt and serial number are available immediately upon filing.  The examiner’s substantive reply will be received within 6 months after filing.  Time necessary for resolving any objection of the examiner varies according to the issues raised.   Opposition period is 30 days.  If no opposition is received, the mark will thereafter be registered with issuance of the trademark certificate.

Upon registration, a federal trademark is first valid for 10 years and, subject to the maintenance requirements, is renewable indefinitely for further periods of 10 years each.

In additional to the normally expected renewal at every 10 years, there a an additional maintenance requirement at 5th year after registration, the fee is HK$10,000 per class.

USA trademark certificate sample :

 

Classification of Goods

Specification of goods or services can either base on actual use or intended use of the mark.  Due to the additional fee associated with the strict commencement of use requirement, most clients choose to specify only the goods or services on which the client’s mark is currently used. 

US examiners are also rather particular about the specification not being too broad or vague, and therefore the specified goods should conform to the US list of acceptable identification of goods.

After filing, the scope of the specified goods or services can only be narrowed and not be extended.  Upon registration, the scope of the exclusive right granted by the registration is limited by the ambit of the specified goods.

Specimens showing the trademark in actual use need to be filed for every class applied.  Label, tag, packaging and container in the case of goods, or advertisement and brochure in the case of services are acceptable as specimens.  For specimens larger than A4 size or do not lay flat, photograph of the goods including a clear view of the trademark should be used instead.

 

Details Required

1.	Applicant’s full name and address.
2.	Description of goods and services.
3.	Logo or stylized mark in .jpg format.
4.	Photo specimens of the trademark as used on each class of goods.
5.	Date of first use of the mark anywhere.
6.	Date of first use of the mark in the USA.

 

 

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