Trademark

U.S. Filing Basis

United States of America is one of the most popular countries among Korean clients who wishes to file their trademarks abroad. When you file a trademark in the U.S., you are required to choose one of the following four filing basis.

  1. Use in commerce basis: Trademark Act Section 1(a)

If your trademark is in the U.S. currently and the use of the trademark can be proved, the trademark can be filed with “use in commerce basis”. Proofs showing the filed mark on them such as English catalogues, English websites, invoices, receipts, advertisement materials should be filed at the USPTO.

  1. Intent-to-usebasis: Section 1(b)

If you intend to use your trademark in the U.S. in the near future, your trademark can be filed with “intent-to-use basis”. When USPTO issues Notice of Allowance, a statement of use proving actual use of the filed trademark in the U.S. should be filed at the USPTO.

  1. Foreign applicationbasis: (Section 44(d)

If you have a pending trademark application in Korea, you can file a trademark in the U.S. with your Korean trademark filing. In this case, classification to file should be identical to those of the Korean trademark filing. Further, goods/services to file should fall within coverage of Korean trademark filing. If the pending application, however, fails to proceed to registration, however, you will have to alter filing basis later.

  1. Foreign registrationbasis: (under Section 44(e)

If you have a trademark registration in Korea, you can file a trademark in the U.S. with your Korean trademark registration. In this case, classification to file should be identical to those of the Korean trademark registration. Further, goods/services to file should fall within coverage of Korean trademark registration.

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