Content

• Steps
• Advice

If you are using a word, symbol, phrase, or design to identify your products or services and differentiate them from those of another company, you probably already own a trademark. . However, owning a trademark is unlikely to protect you from infringement. If you want to exercise your trademark rights against intruders (for example, other businesses that are using your trademark without permission, or are using a similar and confusing sign) for customers), you need to register your trademark with the competent authority.

Steps

Method 1 of 5: Evaluate whether you need a trademark or not

1. 

   Understand what is a trademark. Trademark is an intellectual property, such as a word, phrase, symbol or design, used to identify and distinguish your goods or services from those of others. .
   • In the United States, service marks identify and distinguish the source of the services provided.
   • In the United States, trademark protection protects both trademarks and logos. In Vietnam, Intellectual Property Law does not regulate trademarks or logos, but if the brand and logo are trademarks or part of a trademark, they will also be protected.

2. 

   
   
   Determine the coverage you need, in terms of geographic limitations. Do you only supply your goods or services in Vietnam and do not have plans to expand your sales network to other regions? So most likely you just need to register the trademark in Vietnam. On the other hand, if you want to supply goods or services overseas, consider registering trademarks in other countries.

3. 

   
   
   Sign registration with the competent state agency. In Vietnam, you can register trademarks at the Intellectual Property Department under the Ministry of Science and Technology. In the United States, the federal government has a central trademark registration office through the United States Patent and Trademark Office (PTO). Trademark registration is not required with the PTO, but the registration will give you a definite advantage.
   • Create a legal basis to prove your ownership of the trademark in intellectual property infringement lawsuits (you must prove your ownership of the trademark if you want to claim damages. from using your trademark without permission).
   • Public notice of your rights.
   • In the United States, you can keep a record of your trademark with the US Customs and Border Protection Department to avoid the import of foreign goods that infringe your intellectual property rights.
   • Allows you to use the ® symbol on your goods or services.
   • In the United States, you can take an infringement case in federal court.
   • Allows you to apply for trademark protection in other countries.

4. 

   
   
   In the United States, register your trademark in the state where you live. Your trademark will be protected within the state and you can bring an infringement case to state court. You can also use the ™ symbol for goods and an SM for services (although not for the federal ® symbol).

5. 

   Consider using your trademark without registration. In the United States, if your mark is strong enough and has never been used by anyone else, it is considered a trademark because it has been used for commercial purposes for many years. You can write TM after word, phrase or design without registration. However, without trademark registration with the PTO, you will not have the following rights:
   • The right to use the registered trademark ® logo.
   • Possibility to sue in federal court.
   • The right to list your trademark in the PTO database so that it can be found by others. Similar to the United States, in Vietnam, your mark will not be recorded on the Intellectual Property Department's Industrial Property Digital Library if you do not apply for trademark protection for your trademark. mine.
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Method 2 of 5: Select a brand - Avoid the possibility of confusion

1. 

   Look for existing labels to gauge your potential confusion. In the United States, do a search on the PTO's online site to compare your mark with any registered trademark or trademark application under review, using the Search Electronics System. Brand (TESS). Also, do a search for keywords online and on the trademark database in your state to get results for similar brands, related goods or services to ensure that the mark Your mark will not be confused with other trademarks that are not registered with the federal agency. The PTO will not accept your application if it finds two or more trademarks that have similarities, and that the goods and services bearing the above marks are interrelated, leading to the consumer. users believe that those goods or services have the same origin. In Vietnam, you can also search for trademarked trademarks on the National Office of Intellectual Property Digital Library.

2. 

   Determine if there are existing trademarks that are similar to yours. In the United States, if the brand has the same pronunciation (Apple and Appel), has a similar image (a blue apple and a blue peach), the same meaning, even translating from foreign (Apple and Apple (the Vietnamese meaning of apple)), or make a similar impression to the general public (Apples and Fruits are red), those marks are considered to be similar and the PTO will consider whether Whether the trademarked goods and services are related or not.

3. 

   Evaluates whether a similar mark represents related goods or services. In the United States, if the two trademarks are similar and are used for goods and services related to the extent that the customer may believe the above goods and services are of the same origin, the PTO will refuse to register. your mark due to potential confusion. For example, if you trademark the 'Apple' for use on computers and other technical devices, the PTO will most likely reject the application due to Apple's current trademark. However, if you want to register the 'Apple' for a dishwasher product, the PTO will not assume that the public can confuse your trademark with an Apple trademark. advertisement

Method 3 of 5: Brand Selection - Choose the strongest brand possible

1. 

   Choose a strong brand. The stronger the trademark, the easier it is for you to protect it from unauthorized third-party use. Each brand will fall into one of the categories below, from strongest to weakest. Choose the strongest brand possible.
   • Strange. A word that comes up by you and has no meaning, like ‘Vingra’ for a clothing brand.
   • Meaning of change. A real word with a certain meaning, but not related to the trademarked goods or services. The 'Apple' label for computer products belongs to this group of marks.
   • Suggestive. A trademark that is suggestive, but not publicly descriptive, of the nature or affiliation of the branded goods or service, such as 'Day-by-Day' for a calendar.
   • Descriptive. A word or design that clearly describes the good or service, for example a photo of an oat cookie for a cookie company. Descriptive marks are generally not unregistered unless they have been characterized by widespread commercial use for at least five years.
   • General. A generic mark, such as ‘Automotive 'for an automobile brand, is not registered and has no protection against a third party.

2. 

   Make sure that your trademark meets the conditions for registration. In Vietnam, please refer to the provisions of the Intellectual Property Law (currently Articles 72, 73, 74 and 75 of the 2005 Intellectual Property Law) to determine the conditions for trademark protection under Vietnamese law. . In the United States, the PTO may decline a claim if your mark falls into the following categories:
   • The full name of a person or similar phrases.
   • Offensive.
   • Clearly describe the geographical origin of the origin of the goods or services.
   • Translation of a foreign word that is generic or descriptive.
   • Book or movie title.

3. 

   Analyze the business reason behind your branding. While it may be registered and the trademark protection is in effect, your mark will be of no value if the public is unable to remember, pronounce or spell its name, or the mark makes sense. offensive or contemptuous in a foreign language (for example, in Spanish the brand 'Chevy Nova' (Chevy stands for Chevrolet, a car company) means 'Chevy cannot walk').

4. 

   Hire a trademark attorney. Trademark attorneys can help you choose a brand that is successful through exact search, go through a complicated filing process, provide advice on trademark enforcement, and ensure you no delay in term of maintaining trademark protection. If you decide to hire an attorney, make sure you choose someone with a lot of experience working with the trademark registrar. advertisement

Method 4 of 5: Fill out trademark application with PTO in USA

1. 

   Complete the PTO application form online. The easiest way to fill out an application is to use the Electronic Trademark Registration System (TEAS) on PTO's online site. You need to submit the following documents:
   • Trademark owner's personal information. Trademark owners can be businesses or individuals, and not necessarily a US citizen.
   • Name and address of the applicant. All correspondence to and from the PTO goes through this person, so make sure he or she is trustworthy.
   • Trademark description. This is a drawing of your trademark, divided into two categories: drawings of "standard features" (drawings that include only pictures, without letters or words) and "special pattern" drawings (one word innovated, may include designs, logos, special letters or colors).
   • Type of goods or services related to the mark. This section identifies the goods or services you provide to customers associated with the selected mark.
   • Establishment filling out the application. You must affirm that you are (1) using a mark in a business you own, and that the mark appears on the goods (“commercial use”); or (2) intends to use the sign for the business in the future ("intended use").
   • Sample. If your establishment is “for commercial use”, you will need to submit a photo of the goods or services showing the mark in use (for example a t-shirt with information tags printed with the mark).
   • Signature.

2. 

   Pay the filing fee. Currently, the TEAS filing fee is US $ 325 per class of goods or services.
   • You may select a TEAS Plus application for US $ 275, provided you agree to send and receive all electronic correspondence with the PTO, and must select goods and services from the available list.
   • All PTO application fees are non-refundable, even if your application is denied.

3. 

   Monitor the status of your application. Check the status of your application every quarter or four months. Enter the serial number (provided when you apply) on the Trademark Status and Document Revocation (TSDR) system to check the status of your application.
   • The PTO examiner will review your application approximately three months after submission.
   • If the PTO examiner sends you a document called Office Action, there is a problem with your profile (potential confusion with existing trademarks, strength of trademarks, etc.). You have six months to respond to the above document or your application will be considered void.
   • If the examiner approves your application, your mark will be publicly available in the PTO's weekly Online Gazette.

4. 

   Wait 30 days. After the mark is publicly available in the Official Gazette, the public has 30 days to oppose your trademark registration by submitting an objection to the US Trademark Complaint and Trial Commission (TTAB). . In that case, consult an attorney before proceeding to the next step.

5. 

   Trademark registration certificate. The timing of your license depends on the basis of your application and whether anyone objected to your trademark during the period it was posted.
   • If no one objects, or if you are the winner in the event that the trademark registration is contested, you will be issued with a certificate of trademark registration 11 weeks after the publication of the "use for section" mark. commercial destination ”or a registered trademark in a foreign country.
   • If no one objects, or if you are the winner where the "intended use" trademark registration is contested, you will receive a Notice of Acceptance eight weeks after the publication of the mark. After that, you have six months to submit a Trademark Affirmation of Use to the PTO, or to apply for an additional six months for this. Once the PTO accepts the Assertion of Trademark Use, you will be issued a certificate of trademark registration.

6. 

   Maintain trademark validity with PTO. For your trademark registration to be effective, note the deadlines below.
   • You will need to submit a valid maintenance document titled Use Statement (or No Reasonable Use) to the PTO between the fifth and sixth year from the time of registration, otherwise the trademark of you will be canceled.
   • You must complete an application for reinstatement of trademark protection by the end of the tenth year from the time of registration, otherwise your registration will be canceled.
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Method 5 of 5: Register the trademark with the state in the US or internationally

1. 

   In the United States, register your trademark in the state where you live. If you decide that you do not need trademark registration throughout the United States, you can register your trademark in your state. State registration gives you the right to exercise your trademark rights within that state. Click your state on the following online page to find out about the state-specific requirements and procedures for registration.
   • The state trademark registration process can be faster and less expensive than registering with the PTO.
   • State registration does not allow you to use a registered federal trademark, ®, on your goods or services.

2. 

   Register your trademark worldwide. At least 95 countries have adopted the Madrid System for international trademark registration, including Vietnam. The Madrid system is a procedure that allows you to submit a single international application, in one language for a fee, for trademark protection in the countries of your choice.
   • In the United States, you will apply internationally through the PTO, after which the PTO will transfer the application to the World Intellectual Property Organization (WIPO). WIPO will review your application, keep it in the International Registry and send it to the countries you request for approval (usually for a period of 12 to 18 months). In Vietnam, you need to file an international application with the National Office of Intellectual Property, provided that your trademark has been granted a protection title in Vietnam.
   • Your registration in each country will be valid for ten years, and you can reinstate for another ten years.
   • Many countries have adopted the Madrid System, but there are notable exceptions. For example, as of 2015, Canada was not a member of the Madrid Agreement nor the Madrid Protocol. If you want to register a trademark in Canada, you will need to go through the registration process with a trademark authority in Canada.
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Advice

• In the United States, you can also complete and mail your PTO application. You can ask the PTO to mail the hard copy trademark application, and resubmit it once completed. The fee for the application sent by mail is US $ 375. Note that the PTO does not accept trademark applications by fax.
• Note that even strange and changeable signs can become generic over time, if the trademark owner does not override its use (e.g. 'Aspirin'). , the word widely used today to describe all pain relievers, regardless of brand).
• Control the use of your mark. If at any time your mark is not as strong as it used to be or is used by others without your permission, a third party may file an objection to TTAB and you may lose it. its brand.
• If you are unable to exercise your trademark rights, you may lose it. When a certain number of people have used your trademark without permission, to the point that you are no longer able to exercise your trademark rights, the mark may be canceled.
• Note that internet domain names are not trademarks, and registering a domain name does not give trademark rights. Occasionally, the use of a popular online site address in the community (eg 'match.com') may meet the "actual use" condition for trademark registration, however remember that the domain name itself does not automatically constitute a trademark.