Differences when registering a trademark in the US

With a vibrant economy, a large consumer population and high purchasing power, the US market has always been an attractive destination for businesses around the world. To be able to do business and affirm the brand position in this market, protecting the brand by registering a trademark is extremely important. However, the process of trademark registration in the US has its own characteristics, requiring businesses to understand the procedures to avoid unnecessary risks and limitations. Viet An Law would like to briefly guide customers on some differences when registering a trademark in this market through the article below. In order for customers to better understand the differences, Viet An Law will compare the differences for the intellectual property system in Vietnam for customers to easily visualize.

Differences in the principle of trademark protection

Vietnam: The principle of “Register first, use later” (First to file)

In Vietnam, businesses that pre-register a trademark for a particular good or service will be granted ownership of that trademark, even if they have not actually used that trademark in business. This means:

• First-time registrant preference: As long as your trademark meets the form and content requirements, you will be issued a certificate of registration, regardless of whether the trademark is in use or not.
• Protect the rights of registrants: Early registration helps you avoid being counterfeited, imitated or copied by others to lose the trademark you have invested in building.

The use of this principle for trademark registration has several basic benefits as follows:

• Ensure stability and clarity: This principle helps to create a healthy and transparent competitive environment, making it easy for businesses to determine their ownership of a certain trademark.
• Encourage innovation: Early trademark registration encourages businesses to invest in new product research and development.

US: “First to use” principle

In the US, the trademark protection system operates on the principle of “first-to-use”. This means that businesses that use a trademark prior to trade in the U.S. will be recognized as the legal owner of the trademark, even if they have not registered the trademark. This principle works based on actual use and is one of the priorities when registering a trademark.

• Actual use: To prove ownership, the business must have clear evidence of the use of the trademark in its business activities. This evidence can include invoices, advertisements, product labels, and more.
• Trademark registration: While it is not mandatory to register a trademark in the first place, it will help protect your property rights in a stronger way. Registering a trademark will create a public record of your ownership rights and help prevent unnecessary disputes.

Pros and cons of each principle in trademark registration

Differences in trademark usage requirements after registration

Vietnam is more flexible but needs to be noted

• There is no specific time regulation: Vietnam does not clearly stipulate that the use of the trademark must be started immediately after registration or within how long.
• Importance of Use: While there is no specific regulation, regular and ongoing use of the trademark is crucial to:
• Consolidate ownership: When there is a dispute, proving the use of a trademark will help businesses protect their rights effectively.
• Forms of use: The use of trademarks can be carried out in many different forms, such as:
  • On-product printing: This is the most common form of use.
  • Used in advertising: Promoting branded products and services in the media.
  • Use on websites, social networks: Build a brand in the online environment.

U.S. strict requirements and clear procedures

• Continuous use requirements: The U.S. has clear regulations on the use of trademarks that must be frequent and continuous.
• Statement of Use: The trademark owner must file a periodic Statement of Use to confirm that the trademark is still in use.
• Proof of use: To prove the use, businesses need to retain evidence such as:
  • Sales invoice
  • Advertise
  • Product Labels
  • Transaction Record
• Consequences if the trademark is not used for a long time: If the use requirements are not met, the trademark may be canceled.

Registering a trademark in the US is an important decision for businesses looking to expand their market globally. By being well prepared and supported by experts, businesses can successfully defend their brand in this market. With many years of experience in the field of intellectual property, Viet An Law would like to accompany you throughout the process and procedures of trademark registration in the US!

Any inquiries related to intellectual property in Vietnam, please contact with Viet An Law, hotline (+84) 9 61 67 55 66 (WhatsApp, Viber, Zalo, Wechat) for the best support!