How To Register A Chinese Trademark In The United States

When companies begin to internationalize, it becomes important to seek protection for their ideas in these new locations to prevent entities from copying them and to save on possible legal battles. 

To protect their brand, it is critical for Chinese companies, aspiring to enter the American market, to register a trademark in the United States. 

The trademark system in the United States is a “first to use” trademark system different from the “first to file” system of China, therefore it becomes crucial to understand the process of trademark registration in the United States. 

This guide will outline the steps that you need to take and factors you need to bear in mind in order to register a Chinese trademark in the U.S. and thus protect your business interests in this promising market.

Understanding the U.S. Trademark System

The United States trademark law is administered under the Lanham Act which affords legal protection to those business entities that employ exclusive marks, labels or otherwise distinguishing features in the marketing of their products or services. 

In contrast to the “first to file” system in China, the China National Intellectual Property Administration (CNIPA) grants the trademark to the one who files it, while the USA adopts the “first to use” system. This means that the party that first utilizes the trademark in commerce is normally afforded better rights, including over someone who was first to register the trademark.

Trademark registration in the United States is under the administration of the United States Patent and Trademark Office or USPTO. 

Although trademark rights can be acquired without filing and obtaining a trademark from the USPTO, filing for registration of your trademark with the USPTO comes with additional legal protection. This encompasses national protection, the right to sue in federal court, and public notice of ownership. 

Requirement for Registering a Chinese Trademark in the U.S

The Chinese trademark owners can apply to register their trademarks in the United States regardless of the fact that they first registered the trademark in China. However, there are certain formalities that must be fulfilled to attain the protection of a trademark in the United States.

The applicant must prove that they own the trademark and prove the trademark is in use or will be used in commerce within the United States. This requirement is important because the U.S. uses the first-to-use system rather than the first-to-file system. 

In this context, it is important for Chinese businesses to be sure that the trademark has not been taken by another party in the United States. 

A search through the USPTO can also assist in identifying a trademark in the same field or one that is similar or the same as the intended trademark.

Sometimes Chinese companies may use Section 44(e) of the Lanham Act which permits one to register a foreign trademark as long as the applicant has a valid registration in his country of origin. 

This provision eases the process for Chinese enterprises that are able to provide evidence of their existing trademark; they are able to achieve protection under the law of the United States regardless of whether they were beforehand using the trademark in America.

Procedures for Applying for a Chinese Trademark in the United States

To register a Chinese trademark in the U.S., there are some important procedures that have to be followed and each ensures the trademark is protected under the laws of the United States. 

Here’s a step-by-step guide to help you through the process:

Conduct a Trademark Search

Traditionally, a trademark search must be conducted by the United States Patent and Trademark Office’s Trademark Electronic Search System (TESS) prior to filing an application. 

This step also enables you to avoid trademark infringement in the U.S. since it allows you to know if your trademark is likely to interfere with any existing registered marks to avoid any future legal battle or delays in its registration process.

 Complete and submit the application

With the help of the USPTO’s Trademark Electronic Application System (TEAS), you would have to file your trademark application. 

Some of the information that the application will need to include includes the name of the trademark owner, a description of the goods or services that the trademark will cover, and the correct classification of the goods or services. 

If you are filing under Section 44(e), you must also include with the application a certified copy of the Chinese trademark registration.

This paper explains how to respond to USPTO office actions

Often after filing, the USPTO will send an Office Action if they have found problems with your application. 

These can be simple programming mistakes to the problem of infringement with other trademarks. If you get an Office Action, you are supposed to reply immediately to the Office Action, either with explanations, changes, or other supporting information as may be necessary to address the issues that the USPTO has raised.

Publication and Opposition Period

However, after approval of the application, the USPTO publishes the trademark in the Official Gazette; and any third party has thirty days to file an opposition if the party feels that your trademark is similar to theirs. 

A trademark attorney can be important at this stage in order to make sense of legal issues involved in the case.

Costs and Timeline for U.S. Trademark Registration

It takes money and time to register a Chinese trademark in the United States. 

This paper shows that understanding the costs and the time that these factors take to influence the Chinese companies, enables them to tailor the strategies they use when entering the U.S. market.

Filing Fees

The cost of filing a U.S. trademark application depends on the number of classes of goods or services you intend to register the trademark under and the type of filing you choose:

TEAS Plus Application

The least expensive plan is $250 per class of goods/services. This application has more specific conditions, for example, it is necessary to choose a certain type of goods and services presented in the white list.

TEAS Standard Application

A little more relaxed at $350 per class. It is more flexible in providing the description of goods/services but less specific in the application.

Additional documentation may be needed in cases where the application is filed under Section 44(e) because of an existing Chinese registration; however, the basic fee schedule does not change.

Timeline

The timeline for trademark registration in the U.S. can vary depending on several factors:

Initial Examination

When you have filed your application, it takes approximately 8 to 12 months for the USPTO to make an initial examination. 

At this point, an examining attorney will review it and decide whether the application meets certain legal formalities and if it is likely to be confusing with any other trademarks.

Office Actions

Sometimes, there might be problems like conflict or failure of technology, and the USPTO will write to you an Office Action which adds several months to the registration process depending on your response.

Final Registration

Usually, on average, the entire registration process from the point of filing can take anywhere between 12 and 18 months, without any form of delay. 

However, if you filed under the use intent then it can take some more time for the trademark to get fully registered.

Protecting Your U.S. Trademark

Once registration of your Chinese trademark in the United States has been completed, protection of the trademark becomes critical to eliminating the possibility of infringement. 

The law provides many strong remedies for trademark protection within the United States, but it is essential actively to police the misuse and to act swiftly to secure these rights.

Monitoring for Infringement

Trademark monitoring is a process of tracking the market in order to identify any infringement of your registered trademark. 

The USPTO does not protect your trademark rights and therefore you should make sure that no other business is using a mark that resembles yours. Several strategies can help:

Trademark Watch Services

Several enterprises rely on watch services, which allow them to track new applications for trademarks and the existing marketplace for violations.

Online Monitoring

Visit the websites, social networks, and e-stores to assess how your trademark is used or if it is misused.

Legal proceedings against infringement

If you discover that another party is using a confusingly similar trademark, you have several options for enforcement:

Cease and Desist Letters

In most cases, the initial procedure to combat trademark infringement is to send a letter of demand to the offender demanding that they cease to use your trademark. 

Often times this can help to rectify the problem without going through the process of the court.

Litigation

In the case, that the infringement continues, or the other party does not agree to obey the rules, the actual litigation process should be initiated in the federal court. 

The trademark laws of the United States allow you to sue for damages, an order to cease the use of the counterfeit product, and even the disposal of the counterfeit products.

Customs Enforcement

The U.S Customs and Border Protection (CBP) can also come in handy in enforcing your trademark by seizing any goods that may have been imported and are a violation of your trademark. 

To this end, you must provide the CBP with a record of the trademark that assists with trademark surveillance and the subsequent seizure of counterfeit goods at the U.S. borders.

Enforcing U.S. Trademark Rights

Once registered, enforcing your U.S. trademark rights can also be challenging. Monitoring for infringement across a big and competitive market like the U.S. requires ongoing vigilance.

How Drishti Law Can Assist Chinese Businessmen to Register Their Trademarks in the United States

Here at Drishti Law, we know the difficulties Chinese companies experience when dealing with the intricacies of the registration of trademarks in the United States. 

Our legal team will be glad to help you apply for trademark protection in the United States and defend your rights to intellectual property.

An understanding of the United States trademark regulation

Currently, Drishti Law focuses on the trademark law of the United States and assists in providing detailed information regarding the legal standard and process of registering trademarks in the US. 

We assist Chinese companies in comprehending the major distinction between the American and Chinese environments.

For a complete trademark search

When preparing your application for U.S. trademark registration, our team searches for similar trademarks in the USPTO database. 

This helps to avoid a situation where your trademark is similar to another mark, and you are in for a very expensive legal battle. By pointing to the problems that may arise at an early stage.

Help in Completing Application Forms

Drishti Law offers a variety of services as follows; They assist you in compiling the relevant documents and correctly categorizing your offerings. 

We pay much attention to the application process to ensure that your application does not have any loopholes that may lead to delay or rejection by the USPTO.

Handling USPTO Office Actions

If the USPTO has raised issues in an Office Action, Drishti Law will manage the reply to the Office Action on your behalf. 

We settle any legal or technical problem that the application might encounter at the earliest to keep your application on schedule. We have the necessary experience in dealing with conflicts according to the U.S. trademark law.

Acting for You in Opposition or Litigation

In case your trademark is opposed during the publication period or in case of enforcement of trademark rights against the infringers, Drishti Law shall act on your behalf. 

We manage the disputes politely either through negotiations or through litigation and endeavor to defend your brand.

If you have any questions about registering your Chinese trademark in the United States, please feel free to call 773-234-1139 to set up a free consultation. Our experienced lawyers at Drishti Law will explain and assist you with trademark registration in the United States of America to offer maximum protection to your brand.