US Trademark Application and Evidence of Use of Trademark

As we all know, the United States has a trademark application system based on prior use, so that US trademark applicants need to provide evidence of use in the United States at the time of application. In recent years, with the rise of e-commerce platforms, more and more Chinese companies have conducted trade with the United States, and that is why it is necessary for them to register for US trademarks. The following are the requirements for the provision of evidence of use in the US trademark examination.

First, there are three filing bases for US trademark registration:

  1. The trademark has been approved for registration in the home country – to submit an application on this basis, one needs to submit a copy of the national registration certificate;
  2. The trademark has actually been used in the United States – the trademark have been used in the United States before the application date, and evidence of use of the trademark in the United States must be submitted at the time of application.
  3. To use the trademark in the United States with intent – one needs to provide with intention evidence of use and a statement after issuance of approval notice by the authority. In theory, the period can at most be extended 5 times, with not more than 24 months in total.

One of the above three situations must be fulfilled in order to apply for a registered trademark in the United States.

Second, the evidence of use in the United States is categorized into products and services as follows:

  1. The types of evidence of use for commodity trademarks are: product labels and packaging, product photos with trademarks, invoices, consignments, online sales screenshots, etc.
  2. Evidences of use for service trademarks are mainly manuals, advertisements or business cards about the services provided, and photos of the form of the above evidence. However, it should be noted that the above forms of evidence shall not only display trademarks, but must also display the services provided.

It should be noted that the product or service items shown in the United States evidence of use must be one of the goods or services specified in the United States application, and cannot exceed the scope of the initial application; the trademark on the evidence of use must be clear and distinct, and must be identical to that in the application (for example, English trademarks with a difference in capitalization are generally acceptable. But for Chinese trademarks, they are required to remain identical); the evidence of use must include real product photos, and not a sketch or promotional photo of the product; one must provide evidence of use in the United States of at least one item of a type of products.

However, because some companies and individuals make registrations mainly for the purpose of defence, or only for conducting an intellectual property strategic planning, they have not in the short term or have never planned to conduct sales of products in the United States. Under the registration system of the United States, which is based on the use of trademark, if the evidence of use cannot be provided regularly, the trademark will be invalidated. Therefore, some companies or individuals have tried hard to find solutions from the evidence itself. And thus, the conduct of retouching, forgery and other proliferated are common. Examiners in the past conducted the examination based on trust, however, they now have all kinds of doubts, and will investigate whether the trademark is actually used. It is precisely because of prevalence of cases of forging evidence that the United States Patent and Trademark Office has to make corresponding regulations to regulate and prohibit such acts of forging evidence.

According to the latest examination guide “Commercial Sample Examination: Digitally Produced or Modified Sample and Counterfeit Sample” released in July 2019, the United States Patent and Trademark Office will pay more attention to whether the samples submitted by the applicant are true and whether they are actually used for trademark applicants incessantly submitted digitally produced or modified or counterfeit samples. If there is doubt about the photos of the evidence of use provided by the applicant, the applicant will be asked to provide additional information about the use of the trademark. If the applicant does not provide evidence that needs to be supplemented or amended, or does not respond to the examiner ’s request for information, or the information provided is incomplete and unpersuasive, the examiner shall carefully evaluate the applicant ’s response to determine whether the application shall be rejected under Articles 1 and 45.

In conclusion, the examination of the evidence of use in the United States has become stricter, with a hope that applicants register trademarks for the genuine purpose of use. Applicants shall collect and prepare evidence in accordance with the new requirements of evidence examination, and avoid the non-admission of evidence due to forgery or modification of evidence, leading to a refusal of trademark registration.

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