- Knowledge
introduction
Successfully registering a US trademark is just the first step! If the crucial step of "trademark oath" is ignored, even a brand that has invested a lot of money to build may fail overnight. This article breaks down the rules for trademark oath taking in the United States, with tips for avoiding pitfalls, to help companies hold onto their market "identity cards"!
1、 What is the US Trademark Oath System?
Core purpose: To prevent trademark idleness and maintain fair competition in the market.
1. First Oath (Year 5-6)
Time: Between the 5th and 6th year after trademark registration (based on the registration date).
Document requirement: Submit a Section 8 Declaration to prove the actual use of the trademark on registered goods/services, and attach evidence of use.
2. Renewal Second Oath (Year 9-10)
Time: Between the 9th and 10th year after registration, the following documents must be submitted simultaneously:
Article 8 Declaration (as above).
Article 9 Renewal Application.
Additional option: If the trademark has been continuously used for 5 years without dispute, a Section 15 Declaration can be submitted to give the trademark "uncontested" legal status.
3. Subsequent cycles
Repeat the "Renewal Article 8 Declaration" every 10 years.
⚠ Attention: There is no grace period for missing the deadline! Exceeding the deadline will directly result in the revocation of the trademark.
3、 How to prepare the oath document?
-Submit evidence of use (such as product labels, sales webpage screenshots, sales orders within the United States).
-Fill out and sign the declaration form in Article 8.
2. Unused trademark
Declaration cannot be submitted! If not used and without justifiable reasons, the registration must be abandoned or the unused category deleted.
3. Partial use of trademarks
-Delete unused product/service categories and retain only the actual usage portion.
-Submit evidence of usage for the remaining categories.
Evidence requirements:
The trademark must be displayed for use in US commerce (such as sales, advertising).
The evidence must be generated within 3 months prior to submission (such as recent sales screenshots).
Service trademarks need to provide service scenario diagrams (such as website service interfaces, promotional brochures).
After the expiration date, USPTO (United States Patent and Trademark Office) will directly revoke the trademark rights.
2. Loss of legal protection
Others can register identical/similar trademarks, and the original holder cannot protect their rights.
3. Reapply for risk
When reapplying for an invalid trademark, it may be strictly questioned by the examiner due to being "abandoned".
5、 Avoiding pitfalls guide: 5 core suggestions
Multiple reminders should be set for registration date, 5th year, and 9th year (it is recommended to prepare materials 6 months in advance).
2. Dynamic management of usage evidence
Archive US sales records, advertising materials, and product packaging images every quarter. Unused categories should be deleted as soon as possible to avoid being revoked in a one size fits all manner during the oath taking process.
3. Make good use of the 'uncontroversial' clause
Submitting the 15th declaration can significantly reduce the risk of trademark challenge.
4. Madrid Trademark Special Attention
Even if registered internationally, a separate US use declaration must be submitted and cannot be directly replaced by international documents!
5. Entrusting a practicing lawyer in the United States
Non US companies must submit documents through a US lawyer (USPTO mandatory requirement).
Answer: Compliant! Amazon US website link, order records (including US shipping address), FBA warehouse proof, etc. are required.
2. Is the trademark authorized for use by a US agent valid?
Answer: Effective! Evidence of authorized agent's use in the United States (such as local sales invoices) is required.
3. Include multiple when registeringWhat should I do if I only used one category in reality?
Answer: Delete unused categories when taking the oath, otherwise it may be revoked by a third party due to "not actually using".
4. Can I be exempted from taking the oath due to the suspension of business due to the economic crisis?
Answer: Not exempt! Unused product categories need to be deleted, otherwise the entire trademark may become invalid.
