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 5^th and 6^th 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.