This year, the U.S. Trademark Office has become more and more stringent in the examination of trademark applications, and the time limit has become slower and slower, from the previous average of 8-10 months to the majority of more than 12 months or slower, before the submission of the trademark registration about three months after the allocation of the start of the examination, this year, it became 6 months before the allocation of the examination, and recently more is that some have been submitted to the 8-months are still not allocated to the examination. After examining the trademark application information, if the examiner thinks that there is a need to supplement the amendment or defense, the OA (office action) will be issued, and then the applicant will need to carry out the corresponding operation for the trademark application within the stipulated time for the content of the OA, otherwise the trademark application will be invalid.
The most common OA situation is caused by the use of evidence, the use of evidence required for the registration of U.S. trademarks, is the most painful problem when you register a trademark, today I will tell you about the use of evidence.
U.S. Trademark Application Basis As we all know, the U.S. trademark is the principle of use first, not the application first. 2019 USPTO has made a lot of adjustments and reforms to the trademark application, in order to maintain the order of the trademark application, to avoid fraudulent applications, the evidence of the use of the examination is becoming more and more stringent.
Application Basics
There are four bases for filing U.S. trademark applications, and no matter which one is chosen, evidence of use (specimens) must be provided on a timely basis.
1. "Commercially Used §1(a)": means that the applicant has used the trademark in the United States before the date of application, and is required to provide evidence of such use at the time of filing the trademark registration, and is required to provide evidence of such use at the time of filing the trademark registration and at the time of each renewal of the trademark registration, which is 5-6 years after the registration of the trademark.
2. "Intention to Apply §1(b)": It means that the applicant has not yet started to use the trademark as of the date of application, and needs to provide additional evidence of use after the trademark has passed the examination period and the publicity period in order to issue a trademark certificate. The applicant is required to provide evidence of use after the trademark has passed the examination period and the publicity period in order to issue a trademark certificate. Moreover, the applicant is required to provide evidence of use after the trademark has been registered for five to six years and at each renewal.
3. "Based on foreign registration §44(e)": means that the applicant has successfully registered a similar trademark of the same name in a foreign country (provide trademark certificate and translation), and needs to provide evidence of use after 5-6 years after the registration of the U.S. trademark and at each renewal on a regular basis.
4. "Based on Foreign Priority §44(d)": means that the applicant already has a foreign trademark of the same name and the same class of trademarks under application (provide a copy of the receipt of the trademark acceptance and a translation), and must provide evidence of use within 5-6 years after the registration of the U.S. Trademarks and on a regular basis at each renewal.Specimens require evidence of use So, how should evidence of use be provided?
Evidence of use should show that the branded product has been sold in the U.S. consumer market. The examiner will examine the authenticity of these materials based on the materials provided, and the Trademark Office will reject the trademark application if false and fabricated evidence is provided.
Let's analyze it from three dimensions: products, sales channels and orders:
1. Product Images
1 must provide the corresponding category 1-3 products with trademarks of the actual picture, preferably with packaging and packaging also has a trademark, such as stolen pictures or p picture basically can not pass the Trademark Office of the review, the Trademark Office has a tool is easy to determine whether or not the stolen pictures and whether or not for PS pictures;
2. TM and ® cannot appear in the picture;
3. Pictures must not contain non-English information, otherwise they may be rejected for translation and incur additional costs;
4. A single picture not more than 5mb, size not more than 3500*3500, format jpg;
2. Sales Channels
Online sales channels:
1. The title description contains the name of the trademark and the name of the English subcategory of the product;
2. Maintain a sellable status until the trademark is registered, the price is normal and the currency is in US dollars, and the stock is sufficient;
3. At least one of the trademarked product images in the link shows the trademark, which is recommended to be shown in the main image;
4. The detailed description of the product reasonably demonstrates the attributes of the product;
Note: It must be a sales link that U.S. consumers can buy from, such as Amazon, eBay, Speedway and other mainstream platforms, shopify is not accepted, and other third-party independent sites have a lower pass rate for sales links;
Other sales channels:
1. The address of the physical store in the U.S. and a photo of the product displayed in the store.
2. Contracts or customs clearance documents for the sale of products to the U.S.
3. Orders
Online sales orders:
1. The title description should contain the trademark name and the corresponding product's subcategory.
2. Show address of U.S. buyer (can be coded)
3. Must be full English interface
Other sales channel orders:
1.Sales contract and invoice invoice
2. Receipt from the physical store
How to prepare the evidence of use? At present, most of the applicants choose "business has used §1(a)" as the basis for applying for a U.S. trademark, which requires the applicant to provide evidence of use when submitting a trademark application, and many sellers actually have not actually used the trademark when registering a U.S. trademark, so many of them will choose to Many sellers have not actually used the trademark at the time of registration, so many of them will choose to let the service provider assist in providing evidence of use.
And many service providers before the basic shopify sales link, but shopify link has been included in the Trademark Office of false evidence, so lawyers also do not submit shopify link. Most of the service providers began to provide the independent site of the sales link, and this independent site in the eyes of the U.S. Trademark Office does not have credibility, according to the recent situation, the independent site of the link is also likely to be judged as false evidence. Although some service providers claim that they can provide Amazon sales links, but this situation is the risk of brand affiliation, it is not recommended.
Evidence of Proper Operation
1. It is recommended to provide their own products and product packaging, and print their own trademarks to be registered, to obtain a true and effective product image; such as no marking, you can find a few hundred dollars on the Internet marking machine to mark their own, or contact the service provider on behalf of the marking; such as their own do not provide the product, so that the service provider to provide the product and marking for you, often the product overlap rate is too high, the similarity of the picture is also too high, is not conducive to the next trademark certificate;
2. product images solved, the next is the sales evidence, if there is no brand record on Amazon before, on Amazon shelves branded products is more difficult, we can apply for brand white list on Amazon, so as to obtain the brand's products uploaded on Amazon's qualifications; if there is no Amazon account or white list can not be applied for, you can try in other mainstream platforms such as ebay, If you don't have an Amazon account or can't apply for a white list, you can try to upload the brand's products on other mainstream platforms such as ebay, speedtrade, etc. to get a sales link;
3. product images and real sales links to solve the next is the order, in fact, the order is not registered trademark must provide materials, such as no way to get an order can also choose not to provide orders; of course, if you can provide real orders screenshots, can greatly improve the pass rate of trademark registration Oh, I believe that all the smart seller friends will be able to get the order to it!
What should I do if I cannot provide evidence of use? The above process has clearly told you how to provide evidence of use, but if you really can't or don't feel comfortable to provide evidence of use, but you want to submit the trademark registration urgently, what should you do?
Can't provide evidence of use?
1. Choose "Intention to Apply §1(b)", no need to provide evidence of use when submitting the trademark registration to obtain the trademark acceptance receipt, after the examination and publicity period (about half a year or more), then need to provide evidence of use, evidence of use through the examination, you can obtain the trademark certificate.Advantage: It is suitable for applicants who cannot provide evidence of use in a short period of time but are in a hurry to submit the trademark application, from the submission of the application to the end of the publicity period, there is a long period of more than half a year to prepare the evidence of use, and it is also possible to apply for an extension of time for five times! The most important thing is that the applicant is not required to provide evidence of use until after the examination and publicity period, which reduces the risk of preparing evidence of use for nothing;
Cons: There is an additional $100 official fee compared to other application methods.
2. Choose "based on foreign registration basis § 44(e)", if the trademark, has been obtained in other countries, trademark registration certificate, then the registration of similar U.S. trademarks of the same name, you can not provide evidence of use, you only need to supplement the other countries of the certificate of trademark registration and translations.
3. Choose "Based on Foreign Priority §44(d)", if the trademark has been filed in other countries and has been accepted, then the registration of similar U.S. trademarks with the same name can not provide evidence of use, but only need to add the acceptance of the other country's trademarks and translations.
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