Recently, the US Patent and Trademark Office (USPTO) issued a final ruling against a Shenzhen intellectual property company, invaliding more than 15 thousand US trademarks applied through it, some of which have been used for more than ten years. The company’s violation to rules not only causes a considerable damage to its clients’ interests, but also sounds the alarm for domestic intellectual property practitioners to obey industry rules when applying for US trademarks. In addition, we can see the rules of registering a legitimate trademark in the US for foreigners become more and more strict.

In August 2019, the USPTO issued a new rule requiring trademark applications from outside the United States should be represented by a licensed attorney agency in the United States to go through the proceedings, including application, review, and appeals. This complicates the register procedures and reduces the number of trademark applications from foreigners to a certain extent. In August 2021, the Office of the Attorney General of the US Department of Commerce (OIG) released a 25-page report entitled "The USPTO should improve its control over the review of trademark applications to enhance the integrity of trademark registrations", indicating that control measures should be strengthened in response to the increase in suspicious applications; Ensuing that a new version of the Trademark Modernization Act of 2020 went into effect in December 2021, further cracking down on abnormal trademark applications. According to this Act, even registered trademarks are at risk of being revoked if they have not actually been used in the United States.

Under this circumstance, we advise applicants who have trademarks to be registered in the US must strictly comply with the requirements of the USPTO. Prepare all materials and documents in advance and make sure the validity of them. Never forge documents through PS or other unlawful means! If you are ready, please submit your trademark application based on one of the following four reasons:

Ÿ The trademark to be applied have been actually used in commercial activities;

Ÿ The trademark to be applied is intended to be used in commercial activities;

Ÿ The same products and services have been registered in other Parties to the Paris Convention;

Ÿ The same products and services have been registered in other Parties to the Madrid Agreement and the request for an expanded area for protection have been made.

If the trademark to be applied has been used in the US market, the applicant should reserve relevant evidence of daily use and could submit the application based on the reason of "actually used"; If the trademark to be applied has not been used in the United States, please don’t do any false behavior and try to submit the application with a demonstration of your good intention to use it.

If you want to learn more about U.S. trademark and patent applications, please click here:

https://www.hengboip.com/news/faq/USPTO-how-long-does-it-need-to-apply-a-patent-or-register-a-trademark.html