By Sejal Rajan and Allen Zhou of Jiaquan IP
Trademark registration procedures and requirements often vary from country to country. Being knowledgeable of the procedures of a country in which you seek trademark protection helps to ensure that your trademark registrations are granted and maintained. This chart provides a helpful comparison of U.S. and China trademark requirements.
| United States | China | |
| Application Timeline | The U.S. trademark application process can take about 12-18 months, if the application is based on current use of the mark. This timeframe may increase if the application is based on an intent to use the mark in the U.S., which requires submission of specimens showing use in the U.S. before registration. If an Office Action, requesting more information or refusing registration of the mark is issued, this can also increase the time frame. | The CN trademark application process will take about 8 months if it goes smoothly without extra prosecution work by e-filing The timeframe may increase if any rectification or trademark review is incurred. |
| Basis for Filing | A U.S. trademark application must include a basis for filing. A Section 1(a) basis indicates that the mark is currently in use in the U.S. A Section 1(b) basis indicates that there is an intent to use the mark in the U.S. International filers may be eligible to file on the basis of an existing international trademark application or registration. | There is no difference between current use or intent to use in China. There is only one simple basic trademark application with or without claiming the priority. |
| Use Requirements | In the U.S., use of a mark in interstate commerce is required prior to obtaining a trademark registration. There must be a continuous use of the mark in order to maintain the registration. Proof of use of the mark is required in all trademark registration maintenance filings. A third party may challenge your registration based on non-use in cancellation, expungement or reexamination proceedings. Proof of use of your mark may be needed if this occurs. | No Use Requirement is needed during the application process. Any third party may file a non-use cancellation request against your mark if it has not been used within a continuous period of 3 years from the registration date. If that occurs, “Use evidence” will be needed. |
| Specimens of Use | Specimens showing use of a mark are required prior to obtaining registration and at all maintenance filings. There is a distinction made between what qualifies as a specimen showing use in connection with goods and services. For goods, the mark should be placed on the goods, packaging or in a manner that associates the mark with the goods or the sale of the goods. For services, the mark should be displayed in the sale or advertising of services. | No Evidence of Use is needed unless the mark is attacked by non-use cancellation action. |
| Publication Requirements | With few exceptions, all U.S. trademark applications will undergo a 30 day publication period, once they have been approved for registration. The mark will be published online in the Official Gazette of the USPTO. During the 30 day period, any party may oppose or request an extension of time to oppose registration of the mark. | After about 1 month of formality review and about 3 months of substantive examination, if there is no refusal or notification from the examiner, the mark will be published for opposition for a period of 3 months. |
| Digital/Electronic Registration Certificates | The U.S. currently issues electronic registrations certificates. If you wish to order a hardcopy of your certificate, you may do so through the USPTO.gov by paying additional fees. | If no one files an opposition request against the mark, the application will enter the registration stage. Then, A Digital Certificate of Registration will be issued in about 1 month (Your Chinese attorney will abstract the certificate for you by a set of received digital codes) |
| First to File v. First to Use | The U.S. recognizes common law trademark rights, which can be acquired simply through use of a trademark. Common law trademark rights are limited to the geographic areas where you have used your mark. In the U.S., a trademark registrant has constructive use of their mark on the date their application was filed. This means they have senior rights to the mark against any third party who may have used the same mark after the registrant’s application filing date but before the registrant actually began use of their mark. | The CN applies the First to File policy. However, if a third party had filed your mark first, you may have several remedies available – opposition, invalidation, or cancellation. |
| Registration Maintenance Requirements | A U.S. trademark registration can be continued indefinitely, as long as timely maintenance filings are submitted. These filings are due between the 5th and 6th year from the registration date, 10 years from registration and every 10 year period thereafter. All maintenance filings require a declaration of continued use of the mark and specimens showing use, unless a declaration of excusable non-use is filed. | A CN trademark registration can too be continued indefinitely, as long as timely maintenance filings are submitted. A trademark in China is valid for 10 years from the date of registration. A request to renew the registration must be filed within twelve months prior to the date of expiration. A grace period of six months is allowed by paying a corresponding surcharge. A trademark may be renewed each time for a period of 10 years. |
Category:
Trademarks
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