What is a trademark?

A trademark tells you the source of a particular brand, or, more precisely, a particular product or service. Trademarks can be names, logos, slogans, or, in some cases, sounds, colors, or scents that remind you of a brand. Registering a trademark can protect your brand-related products and services and enhance your ability to operate your business. Our lawyers have filed hundreds of trademark applications, including the U.S. Patent and Trademark Office (USPTO), state trademark applications, and international trademark applications.

Trademark search and application package

Recommended trademark application and search services include:

  1. Initial trademark consultation and pre-strategy
  2. Consult with Mr. Lee to search for the same trademark and determine whether there is a clearance report with other trade names to establish results and application strategies
  3. Strategic preparation of descriptions to maximize trademark protection of products and services
  4. Drafting, preparing and applying trademark applications
  5. Responding to the USPTO’s Office Actions
  6. Responsible recording and following up application status
  7. Confirm registration
  8. Supervise for renewals and other services

When your trademark is registered as a federal trademark, you have the following benefits:

– Others are able to confirm that you have trademark ownership in the United States

– Presumption of proof of ownership and ownership of a trademark.

– Jurisdiction in federal court (when you are suing to prevent trademark infringement)

– Federal trademark registration can be used to obtain international trademarks

– You can apply to the U.S. Customs and Border when you apply for registration to prevent imports of products from overseas that infringe on you trademark.

2. Search for the same Trademark

Searching for a trademark before applying for a trademark registration is very important to avoid making any problematic applications. We conduct comprehensive U.S. and international trademark searches. Our search is not just about providing search reports. Our search includes consultation with a trademark attorney to discuss about same or similar trademark names already registered.   . For example, if you know that there is a potentially problematic trademark is in progress or will soon be a trademark, it may affect your trademark registration.

Is it necessary to search for the same trademark?

Other than starting or launching your brand, searching for the same trademark is the most important process. First, the search will determine the likelihood of trademark registration by the U.S. Patent and Trademark Office. We will also look at if there are any similar trademarks or ongoing applications that may be a problem for registering trademarks. Furthermore, we will determine if other trademark owner will object to your application after USPTO accepts your application.

It is very important to know in advance if there are any previous trademark owners. In such cases, the U.S. Patent and Trademark Office suggests that the trademark registration may be denied or that it may be in your best interest not to proceed with the trademark to avoid litigation. Before spending a lot of money in brand marketing, advertising, and requiring business management, we provide necessary information you need to know to decide whether your trademark can be registered.

3. USPTO Examination Results

Notice of results of the USPTO examination is generally called an Office Action issued by the U.S. Patent Office examiner. If an examiner needs to review your application and reject or amend your application, an Office Action will be issued. There are several types of Office Actions, from procedural refusals to modify the description of products and services, to notification of substantive results, such as likelihood of confusion. Our office prepares to respond to USPTO’s Office Actions.

The general substantive Office Actions that our office responds to are as follows:

  • Likelihood of Confusion
  • Immoral or socially problematic
  • Merely descriptive
  • Case with intention of deceiving
  • Generality
  • Geographically descriptive
  • Mainly a simple surname

4. Proof of actual use

Submitting proof of actual use means that your ongoing trademark registration application is granted and will be registered and approved by the examiner when you submit the actual proof of use in the future. Actual use evidence is a declaration submitted by the applicant or the applicant’s lawyer, claiming that the applicant will actually use the trademark in the products and services that the applicant originally applied for trademark registration in the United States.

When to submit evidence for actual use

If you have applied for trademark registration as ‘in use’ or filing basis 1A, you do not need to submit proof of actual use separately. However, if you receive a notice of acceptance with the application as intent to use’ or filing basis 1B, you must submit proof of actual use within six months of the date of issuance of the notice of acceptance. If you fail to submit anything, your application will be considered abandoned.

What do I need to submit to prove an actual use?

The purpose of the actual proof of use is to demonstrate that the trademark is actually used in the products and services that have been registered. Therefore, the following information is required: (1) the date of the first use of your trademark in the transaction of products and services that have applied for trademark registration; (2) sample product with trademark showing. The sample product must be in the same category as product and service that was originally applied for during trademark application.

  • For products: If it is a trademark for a product, please send us the same JPEG photo file as the requested trademark on the actual product. You can submit a product tag, label, packaging container of the product, display of the product, or a product photo that shows that the product is being trademarked. Do not just submit the product. For example, if a product is a medicine, the trademark must be clearly visible on the pharmaceutical wrapper. For clothing such as shirts, the trademark must be on the back tag of the shirt, on the sleeve, or at the corner under the shirt. Invoices, notices, orders, lines, flyers, brochures, promotional materials, company names and business cards printed on the paper are generally not accepted as product samples.
  • For services: A sample of the trademarks used in connection with the Service must show that the trademark was used by selling or advertising the Service. You can submit a photo showing the trademark used when you provide or service a trademark or service in brochures, service advertisements, business cards, or stationery related to the Service. You must not only show a trademark, but you must comment on the services you provide to the trademark. For example, if you want to register a trademark as “XYZ”, it is not acceptable to have only “XYZ” on your business card. If your business card is marked with “XYZ Authorized Brokerage”, it will be accepted.

Note: Photo samples must be the exact same as the trademark that applied for trademark registration. If the original trademark is a logo and the sample is a different font or painting, the U.S. Patent and Trademark Office will refuse proof of actual use.

If you are not using the trademark yet, but you have already received a notice of acceptance.

You can postpone the deadline for submitting evidence for actual use. In this case, the deadline for submitting proof of actual use will be extended by six months from the date of issuance of the notice of acceptance. You can extend a total of five times. However, actual use evidence must be submitted within 36 months from the date of issuance of the notice of acceptance.


$100 for submitting actual use evidence to the U.S. Patent and Trademark Office from 2016 onwards and $150 for an extension application.

5. Section 8 and Section 9 Statement of Use

Statements of use must be filed with the U.S. Patent and Trademark Office five years after the registration of the trademark and before the end of six years. If you do not submit it in time, your trademark registration will be automatically cancelled. In addition, in accordance with Section 8 and Section 9 of the U.S. Patent And Trademark Law, renewal applications and applications must be filed before the end of the 9th to 10th years from the date of registration, otherwise the registration will expire. Statement of Use must be filed within the due date in order to maintain the trademark registration rights.

Section 15 Declaration of Incontestability

In addition, to be more advantageous in trademark registration, you can claim section 8 and 15 to obtain the right to incontestability. Registering under this section is a conclusive evidence of the validity of a registered trademark and the exclusive right to use the trademark. If you have legal issues with trademark registration, we recommend that you submit them.

6. Trademark Registration Objection Process

The process of objection to trademark registration is to be conducted before the Trademark Trial and Appeals Board, when a third party challenges the application for trademark registration. For example, if you have applied for trademark registration (therefore you become an “applicant”) and your competitor knows this and object to the trademark registration, your competitor may file an Notice of Opposition within an appropriate period of time. The objector must file this within 30 days after the publication of your mark.

Trademark Oppositions are similar in many respects to trademark infringement litigation. It is just many of the terms are different. For example, an opposition must be made and the trademark registered applicant must respond. In most proceedings, the parties in federal court litigation will comply with the Federal Rules of Civil Procedure. The parties shall initiate written evidence and the initiation of evidence, such as testimony. But there’s also the difference: there’s no jury trial. Instead, the case will be heard by the Trademark Trial and Appeal Board. In addition, property damage or prevent of use are not a possible remedy in this proceedings. The only possible remedy is to prevent the applicant from registering the trademark.

Why is this important? As you know, registering a federal trademark is very important because it generally protects the trademark inside the country. It is an important right of the trademark owner to prevent competitors or infringers from registering infringing trademarks.

We have filed and responded to hundreds of trademark-related issues, especially in disputes with the U.S. Patent and Trademark Office, cancellation procedures, and other complex cases.

7. Trademark litigation

“We specialize in trademark and intellectual property litigation.”

We have developed expertise in trademark litigation for many years. In fact, the vast majority of our clients come to contact us about trademark rights and related intellectual property litigation because of our complete understanding of trademark law. We know the importance of our customers’ trademark and its reputation, and how to effectively protect them. When appointing a lawyer to prevent trademark infringers or protect business, you should choose as an experienced litigant who knows the appropriate strategies for trademark rights, unfair competition, trade secret laws, and, if necessary, settlements.

As the nature of the business and the symbolism of the Internet and e-commerce change, the trademark attorney sought by the customer must be with all the forms of litigation mentioned above. From our experience, we advise you on the pros and cons of trademark litigation and start the right procedures at a reasonable price. We are proud of our knowledge and experience in trademark law and if you need to contact us about your problems, please contact us.

8. International trademark application strategy

Many people want to know how to protect their trademarks internationally. In fact, there are no universal international trademark. As with patent rights, trademark rights are only accepted in the country in which they are applied, as the jurisdiction is different in each country. Therefore, U.S. trademark applications are trademarked only in the United States. To protect trademarks registered in the United States in Japan, Germany, or other countries, you must apply for a trademark in each of those countries. This can be costly and time-consuming. However, there are ways to simplify your application and reduce costs in the long run by applying for the Madrid Protocol.

Application for the Madrid Protocol

Since 2003, the United States has become a member of the Madrid Protocol. This simplifies the process by allowing the registration of international trademarks in many member countries with a single application. Prior to the Madrid Protocol, for each country that you wanted to apply for trademark registration had to hire an attorney there and apply individually. You can now apply through a U.S. attorney without the trouble of appointing a lawyer from each country. In other words, you can apply for the Madrid Protocol and register your trademark in different countries, just as you apply for trademark registration in the United States. In general, choosing EU (which consists of about 29 countries) and other countries through this protocol makes it relatively cheaper and more competitive than when selecting a lawyer in each country. There are currently 60 countries in the Madrid Protocol. However, there are several conditions to take advantage of this.

Conditions required to apply for the Madrid Protocol

To apply for the Madrid Protocol, you must have the following satisfied:

  • Application for U.S. trademark registration is in progress or is registered with the U.S. Patent and Trademark Office,
  • Trademark owner must be U.S. citizens, actually residing in the United States, or have substantial and valid industries or commercial businesses in the United States.

Madrid Protocol Costs

When you apply for the Madrid Protocol, you must pay the application fee to the U.S. Patent and Trademark Office. The cost of your application depends on the number of products and services you want to apply for. The more products and services you have, the higher the cost of your application.

Second, you must pay the International Trademark Registration Fee to the World Intellectual Property Organization (WIPO). The cost varies depending on the country you specify for trademark registration at the time of application.

Madrid Protocol Procedure

Assuming that the client is in the process of applying for trademark registration in the United States or already has a trademark registered, the attorney will apply for the Madrid Protocol with the U.S. Patent and Trademark Office. The U.S. Patent and Trademark Office will forward subsequently confirmed applications to the International Bureau of The World Intellectual Property Organization (IB), which is responsible for the Madrid Protocol. The International Bureau determines whether all the requirements for application are met. Upon fulfillment, the International Bureau registers the trademark and sends the confirmation to the applicant. If there is a problem with the application, the International Bureau will issue a notice called “Notice of Irregularity”. You can overcome this by replying to this accordingly.

If the International Bureau accepts the application, the customer, referred to as a “Member State” in the Madrid Protocol application, will notify each of the countries in which the trademark is registered. Each member state sees and judges it equally as it is filed under the law within the country. If your application is approved by the country, your trademark will be registered.

Final Note

Application for trademark registration in the United States is very important because it influences the application of the Madrid Protocol. If you waive or cancel your trademark registration application in the United States within the first five years, your trademark registration will be cancelled in the International Bureau.

9. Explanation of the rationale for applying for international trademark registration

When you apply for a U.S. trademark for the first time, you will apply on the filing basis of 1(a) “actual use” or 1(b) “intent to use”. However, if a trademark holder who has already registered or registered a trademark overseas wants to register the same trademark in the United States, he or she must apply for U.S. trademark registration in a different way. In such cases, you will apply on the filing basis of the 44(d) or 44(e).

     I.Section 44(d) Foreign application basis

If you have applied for trademark registration for the first time outside the United States, the same trademark registration application may be made in the United States under section 44 (d) within six months of the first foreign application. In this case, the application in the United States will receive priority on the date of application for the original foreign trademark. In other words, the original foreign trademark application date is the valid date of the U.S. trademark application.

This concept of the foreign priority date is important because if the other trademark is applied in the United States after the priority date of 44(d) the applicant (the original foreign application date), the applicant of 44 (d) takes precedence over the other application. For example, if a 44(d) applicant’s trademark registration date in the United States is later than the other applicants, the application for article 44(d) will have priority because the priority date (the original foreign application date) is earlier than the date of application in the United States of the other trademark applicant.

Requirements for applying for section 44(d)

  1. There shall be a claim for priority date within six months from the original foreign trademark application.
  2. The application for foreign trademark registration shall be made in the country in which the applicant was born.
  3. Trademarks applied in the United States in accordance with section 44(d) shall be identical to the trademarks originally applied abroad.
  4. Applicant must specify the date, application number, and country of application of the original foreign application.
  5. The applicant must submit a statement stating that the trademark will be used commercially.
  6. Both the country in which the applicant was born and the country in which the applicant is registered for the foreign trademark must be a member of the National Treaty that acknowledges priority claim.
  7. The scope of products and services shall not exceed the scope of the original foreign trademark registration application.

The advantage of filing under Section 44 (d) and 44(e) is that you do not have to prove that you will be using trademark commercially in the United States when you apply for the initial trademark registration. Therefore, a sample that is generally required at the time of application on a 1(a) basis is not required for section 44 applications.

The description of the product and service in section 44(d) is another problem. In general, when applying for Section 44(d), the United States requires that products and services be exactly the same as trademarks originally filed overseas. Unlike the United States, however, many foreign countries allow a wider range of products and services. If you have a broader description of the product and services compared to the original foreign trademark, and you have filed a 44(d) application, the U.S. Patent and Trademark Office may ask the applicant to clarify the description or reduce the scope. No matter what action the USPTO takes, the scope of the products and services of section 44(d) may not exceed the scope of the original foreign trademark application.

Finally, if the application for section 44 (d) is filed after six months from the original foreign application, foreign applicants can still apply for trademark registration under Section 44, but do not receive the benefits of the foreign priority date.

     II. Section 44(E) Foreign Registration Basis

Section 44(e) may apply at any time after the trademark you are applying for in the United States has been registered in foreign country. Similar to section 44(d), you do not need to prove that you are actually using the trademark in the United States at the time of application. However, the applicant must have a sincere intention that the trademark will be used commercially in the United States at the time of application. In fact, if no such sincere intention is demonstrated, the trademark will be considered invalid from the beginning. Further evidence of commercial use is always mandatory in the following section 8 and section 8/9 renewal. In addition, even though the actual basis for commercial use is not required when applying for section 44, it is required when filing a trademark infringement lawsuit in the United States. The basis of commercial use of trademarks is important when there is a claim that the registrant has abandoned the trademark.

Section 44(e) application must be submitted with a copy of the foreign registered trademark at the time of application, and if it is not English, a translation must be submitted as well. In accordance with section 44(d), goods and services must be the same as the contents of foreign registered trademarks and must not exceed the scope.

A trademark registered in foreign country does not necessarily guarantee that a 44(e) application in the United States will be accepted. Applications are reviewed in accordance with U.S. Patent and Trademark Office standards and trademark laws, and applications may be denied for various reasons even if the same trademark is registered in foreign country.

     III. Revising filing basis for the U.S. trademark application

Often, especially if time is important to apply for trademark registration in the United States, the initial error in the application cause some problem. In some cases, the error can be revised by submitting a voluntary amendment. For example, the applicant may have misrepresented the application on the basis of a 1(b) “intention to use”. However, previous foreign trademark registration applications may meet the requirements of 44(d) priority grounds. In that case, you can make voluntary amendment to the 1(b) filing basis. Accordingly, the applicant can simultaneously stop the application until the application is submitted to the foreign registration trademark and apply for registration on the basis of section 44(e).

In other cases, if the application for foreign trademark registration does not continue until registration, you can amend the section 44 application. Ultimately, for 44 applications, applications for foreign trademark registration must be registered before they can be registered under section 44 in the United States. If you don’t have a foreign trademark registered, you will be able to amend section 44 application to 1(a) to prove that you are using the trademark in the United States.

     IV.66 (A) International trademark registration in accordance with the Madrid Protocol

Under Section 66 (a) of the Lanham Act, applicants are entitled to broader protection of internationally registered trademarks recognized under the Madrid Protocol. The Madrid Protocol is a treaty that is followed by several member states and is administered by the World Intellectual Property Organization (WIPO).

– Detailed trademark issues

  1. Trademark infringement
  2. Issue with Trademark Ownership
  3. Trade dress (form of intellectual property for visual appearance or image of the product)
  4. State Trademark Registration v. Supplementary Trademark Registration

There are two types of trademarks within the U.S. Patent and Trademark Office, which are divided into Principal Registration and supplementary Registration.  Generally, when an applicant applies for a new trademark registration and gets approved and registered, it is recorded as Principal Registration. However, in certain circumstances while examining an application, the USPTO may make recommendations or the applicant may modify the application to supplemental registration through voluntary amendment. Typically, “descriptive” marks are recorded as supplemental registration, not principal registration.

The question is what are the differences between these two? The principal registration are considered to be stronger protection in that it receives many advantages. The table below shows these differences.

Principal Registration Supplementary Registration
Protect distinctive trademark Protect non-distinctive trademark
Validity is presumed The owner has burden of proving validity
Presumption of ownership, and provides constructive notice so as to eliminate an infringers good faith defense No presumption of ownership or constructive notice
Can later become “incontestable” by filing a Section 15 affidavit. There is no claim of incontestability
May record to U.S. Custom Services to prevent imports of counterfeit. Cannot record to U.S. Custom and Border
Trademark registered as Principal registration may be the basis for the Madrid Protocol application. Trademark registered in the Supplemental registration may also be the basis for Madrid Protocol application. However, cannot file Madrid Protocol application based off of a supplemental register trademark.
Can initially file an application on an intent to use basis Supplemental application cannot utilize an “intent to use” filing basis.

Given the disadvantages with the Supplemental register, why would an applicant amend their application to the Supplemental Register?  As stated above, “descriptive” marks must go on the Supplemental Register.  What typically occurs is an applicant will initially file a descriptive mark on the Principal Register, and later during the prosecution of the application the examiner will reject it on the grounds that the mark is “merely descriptive”.  As such, the applicant in some cases can overcome the rejection by amending the application to the Supplemental Register.  In other cases, even if the examiner believes a mark is descriptive, the applicant may argue that it has achieved acquired secondary meaning and therefore entitled to remain on the Principal Register.  While there are disadvantages to the Supplemental Register, there are several advantages that it does provide compared to not having any registration, such as:

  • Allows for a lawsuit for trademark infringement to be brought in Federal Court, just as a Principal registered mark would;
  • 3rdparties cannot register a confusingly similar trademark on the Principal or the Supplemental Register;
  • Registrants of Supplemental trademark can still use the ® notice;
  • After the trademark has been used and registered on the Supplemental Register for five (5) consecutive years, the registrant can reapply on the Principal Register.
  1. Apparel and trademark issues
  2. Prohibition of Domain Preemption and UDRP (Unified Domain Name Dispute Resolution Policy)
  3. Responding to fair use of trademark
  4. Trademark branding