Part one: trademark registration service

1. reaching Trademark office database, drafting researching report

2. preparing legal documents and filing applications

3. preparing ITU legal documents and filing ITU applications

4. filing delay application at trademark office if the mark does not begin to use at that regulatory period (generally 5 times in 3 years)

5. filing objections regarding trademark infringement (based on customer confusion, dilution, or other theories)

6. replying Trademark office actions

7. filing cancellation registration

8. drafting assignment documents & recording the assignment at Trademark Office

9. others 

Part Two: Common questions about registering a trademark in the United States

Where do I file the application?

Applicant needs to file the application at the United States Patent and Trademark Office (USPTO).

What signs can be registered as TM?

In the United States, almost anything can be a trademark if it indicates the source of your goods and services. It could be a word, slogan, design, or combination of these. It could be a sound, a scent, or a color. You can also be registered your trademark in standard character format or special form format.

The standard character format: example: the following CocaCola TM, it protects the words themselves and is not limited to a particular font style, size, or color.

What signs can be registered as TM (1)

The specialized character: example: the following TM, the stylized lettering is a significant part of what’s protected. 

What signs can be registered as TM (2)

What signs are not allowed to be registered as Trademark in the United States?

Trademark Act section 2 listed the marks cannot be registered as trademarks in the United States. Such as the marks consists of or comprises immoral, deceptive, or consists of or comprises the flag or coat of arms or other insignia of the United States or any States or municipality, etc.

Is it necessary to do research before filing the application?

No legal requirement, but we strongly recommended because it will help you get the main information about the risks of the application.

Does United States allow defensive registration?

No, United States does not allow defensive registration. In other words, you can only register the marks for the goods or services in the class that you will use them.

Does Unites States require applicant having good faith to file the application?

Yes, it does. At the time of filing the application, Trademark Act requirements applicant filing intent-to-use application with statement of bona fide intention to use the mark in commerce. 

How long the USPTO will finish the preliminary examination?

It depends. It could be 9 months or longer because too many applications filed in 2021 and the pandemic, which caused great application dependency. 

During the preliminary examination, will USPTO send applicant letters or document to correct or change some information?

Yes, it could be. If the USPTO examination attorney finds the application has issues, it will issue office action to the applicant. Applicant must reply in a certain period time. 

How long for the application to be published?

30 days. During the published period, third party may file petition to object the application. 

How to sustain a registration in the United States?

Each registration shall remain in force for 10 years except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the USPTO affidavits that meet the requirements:
 a)Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under the Trademark Act or the date of the publication under the section 12(c);
 b)Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date of registration.
 c)The affidavit shall
     oset state the mark is in use in commerce;
     oset forth the goods and services recited in the registration on or in connection with which the mark is in use in commerce
     obe accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may be required by the Director; and
     obe accompanied by the fee prescribed by the Director; or
    oset forth the goods and services recited in the registration on or in connection with which the mark is not in use in commerce;
    oinclude a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark; and
    obe accompanied by the fee prescribed by the Director.

How to cancel a registration?

You can file the application at TTAB to petition to cancel a registration.