The hoops to jump through for global brand protection

10:00 | 05/05/2021
With an increasing number of brand names of Vietnamese enterprises such as Pho Thin 13 Lo Duc and ST25 rice recently taken advantage of in the US market, protection of trademarks in the States through the United States Patent and Trademark Office (USPTO) becomes crucial. Le Quang Vinh, intellectual property attorney from law firm Bross & Partners, writes about how enterprises can shun such a predicament in foreign markets, especially the US.
1542 p17 the hoops to jump through for global brand protection
Le Quang Vinh, intellectual property attorney from law firm Bross & Partners

Similar to Vietnamese law, trademarks in the US are basically also defined as signs used to distinguish goods and services of different organisations and individuals. Unlike Vietnam’s Law on Intellectual Property where only visible signs such as letters, words, drawings, images, including hologram or a combination of elements are protectable, the US also grants protection for invisible marks such as taste or sound marks.

You can choose one of two ways to apply for trademark registration in the US. The first is to apply directly to the USPTO through a US law firm, also known as “national registration”; or apply indirectly to the US by using the Madrid Protocol, which is also known as “international registration”.

US legislation requires that a protectable trademark must simultaneously satisfy two conditions: it has the function of distinguishing source of commerce amongst the same types of goods/services; and it is not confusingly similar to the other’s trademarks registered or earlier used in the marketplace in the US.

A free online trademark searchable tool can help make a quick search to identify whether a brand has been filed/registered by another or not. However, assessing the possibility of grant of protection of a brand in the US usually requires specialised skills and practical experience. On a case-by-case basis, thus, any interested parties should consult trademark practitioners for assistance.

In case of national registration, at least one filing basis in an application for registration must be included.

The first is an application based on use of your trademark in commerce (Section 1A). Where you are currently selling, distributing, or advertising a good/service bearing a particular trademark in US commerce, Section 1A must be chosen. In this case, you must provide a date of the first use of the mark associated with the product selling in the US; and one specimen of trademark for each class showing how you use the mark in commerce associated with the goods/services.

In 3-4 months, if everything goes smooth, the USPTO approves your trademark and gives 30 days for opposition to make itself known. If no opposition is filed, a certificate of trademark registration will be issued in three months.

The second is an application based on intent to use your trademark in commerce (Section 1B). In the event that you have not yet sold or displayed goods/services in the US, you are still able to file an application for registration of your trademark on the grounds that you have a bona fide intention to use your mark in commerce in the near future.

Using Section 1B, the USPTO examines and approves your trademark in about 3-4 months as usual before publication in 30-day for possible opposition, and without opposition, a notice of allowance will be issued. In this case, you will have a 6-month term to provide with the USPTO a statement of use (SOU) and evidence showing that you have started selling goods/services in commerce. Where a SOU is accepted, a trademark registration certificate will be granted.

The third is an application based on your foreign registration (Section 44E). You can file a trademark in the US by relying upon your ownership of a foreign trademark registration for the same trademark used for the same goods/services. To use this filing basis, your trademark must have been registered in Vietnam.

The USPTO examines and approves your trademark in about 4-6 months before publication in 30-day for possible opposition. In about three months after your trademark is published without opposition, a trademark registration will be granted.

The fourth option is an application based on your foreign application (Section 44D). Where your trademark in Vietnam is still pending less than six months until the date of filing the same in the US, you may use Section 44D. The USPTO will suspend examination of the US as-filed application pending your provision of your foreign trademark registration. Only after you have provided a certified copy and translation of certificate of trademark registration in the country of origin, will the USPTO officially grant protection for the US trademark.

If applying indirectly through international registration, a Section 66A application is made by your request for extension of protection of your registration through designating the US in your application submitted with your home country (for example the Intellectual Property Office of Vietnam) or in a subsequent designation form that is filed with the International Bureau under the World Intellectual Property Organization (WIPO).

If no ground for refusal is found, in about 5-6 months from the date of WIPO’s publication, your trademark will be approved and published for possible opposition. And within three months after publication without opposition, a US trademark registration will be issued.

In order to maintain the validity of a registered trademark in the US, the US Trademark Act strictly regulates the owner’s obligation to use a mark after registration. Failure to comply with such use requirements will lead to the consequence that your registered trademark will be cancelled in the US.

Therefore, you should pay high attention to the following deadlines to submit a declaration of actual use (DAU) to the USPTO.

Within one year from the first day of the fifth year and before the end of the sixth year from the registration date, you must submit a DAU and evidence showing that use under Section 8 and pay an applicable fee.

For trademarks filed under Section 1A, 1B, 44D, or 44E, within one year before the expiry of every 10-year anniversaries from the registration date, you must file a DAU and an application for renewal under both Sections 8 and 9 against a required fee.

In the case of a trademark filed under Section 66(a) and on the condition that a fifth year DAU was duly submitted, within one year before the expiry of every 10-year anniversaries after the registration date, you must submit a DAU under Section 71 against the maintenance fee, and in the meantime you must file an application for renewal of your international registration (designating the United States) to the WIPO.

By Le Quang Vinh

What the stars mean:

★ Poor ★ ★ Promising ★★★ Good ★★★★ Very good ★★★★★ Exceptional

Based on MasterCMS Ultimate Edition Ver 2.9 2020