I. Patent Application

If you want to create an invention and protect it, you need an experienced, licensed lawyer, registered with the U.S. Patent Office, and a lawyer who can lead the patent process. Applications include utility patent applications, design patent applications, plant patent applications, or provisional patent applications. We will consult you to inform you which of your inventions is available.

 A. Step 1: Patent Search

In order to determine if an invention already has a patent, we will search whether the invention is patent-feasible and has novely element to determine if it can be transferred to the patent registration process. If we believe that a patent is already registered for an invention that is the same or similar, you can save money and time by not applying for a patent. However, if your invention is very different from the ones before, we recommend that you go through the patent registration process. This comprehensive search is conducted in conjunction with the U.S. Patent and Trademark Office. In addition to determining patent possibilities, the search results provide additional useful and relevant information.  Typically, our company receives a per-case fee for searching patents with general complexity, but it is charged per hour for complex patent applications such as computer software, electronic devices and business practices. Getting search results depend on the complexity, but it typically takes two weeks. The results include the pdf file of all previous articles and applications we have found, comments on the patent attorney’s patent availability, and writings of the client’s invention, which comprises of the comparison to the previous items we have explored.

     B. Step 2: Patent application and procedure

If the invention is determined to be patentable, an application will be completed. Progress time and charges can vary depending on the complexity and technology of the target. The typical cost associated with our regular utility patent application starts at $8,000. This includes the cost of applying for the first time to the U.S. Patent and Trademark Office and the creation of a drawing. Many other lawyers charge these two separately so you can save a lot of money if you decide to hire us. We will write patent applications that can make you win over your competitors, increase your enforceability, and quality application that is appropriate for protecting your invention in court. Approximately six months to one year after the application is received, the United States Patent and Trademark Office will issue a notice to approval or rejection. Typically, the United States Patent and Trademark Office asks you to make various corrections in your application. Meanwhile, we will prepare practical claims that can overcome the refusals. Applications can only be approved if they are well-addressed with the United States Patent and Trademark Office’s request. As soon as your application is received, you can use the phrase “patent pending” in your invention as a warning to others. This mark may be used to inform prospective patent infringers that they are liable for damages after a patent right has been issued. Note: If you want to protect the appearance of an invention rather than a function, a “design patent application” is more appropriate than the “utility patent application” described above. Design patents are simpler than utilityl patents. The cost of filing a design patent application for our company is $3,000 and it includes the cost of filing with the U.S. Patent Office. We have been directly applying for several overseas patents through the Patent Cooperation Treaty (PCT). Applying for an overseas patent is complex and expensive. Please call for consultation and a quote.

 

     II. What is an opinion letter?

There are different types of opinion letters such as Freedom to Operate, Infringment, and patent posibilities. Generally, customers will receive infringement letters and need to know the next steps in response to a patent infringement lawsuit. We recommend you to consult with competent patent attorney. Legal opinions have a positive effect in that it prevents you from bigger loss and save attorney fees. Many cases have shown that you can get a good result if you follow effective litigation strategies and practices from patent attorneys. Our opinions are thoroughly prepared, and it also includes strategies of how to defend against potential competitors and possible perspective of a federal judge’s scrutiny.

To avoid costly consequences……. U.S. Patent Law and the U.S. Court of Appeals for the Federal Circuit impose appropriate attention obligations on companies that have infringed patents. If you do not meet your obligations, under Section 284 and 285 of the U.S. Patent Law, the court may charge three times the actual damages and attorney’s fees to those intentionally infringed the patent right.  A thoroughly written opinion helps companies avoid these costly consequences.

Independent legal opinion… With our experience and judgment, we provide high-quality potential infringement and validity opinions for our corporate clients. Our experience in preparing, enforcing, drafting opinions, fighting in litigation and appeals will help you when you’re in a real case or threat.

2. Patent Search

 

3. Notice of Rejection from U.S. Patent and Trademark Office

When a patent application is filed with the U.S. Patent and Trademark Office, a patent examiner is assigned to the application. First, the examiner will determine whether all required formats have been met, and the second is to determine whether the application is novel from the perspective of the patent currently filed and registered. If the examiner finds a reason to reject the application, a notice of refusal will be issued.

You will receive your initial notice at least a few months after you apply for a patent. Generally, depending on the application submitted prior to the USPTO and the workload of examiner, you will receive initial notice after one year from the date of initial filing.

If you have appointed an attorney, all USPTO notices will go directly to your attorney’s office. When a notice of refusal is issued, the attorney and client will work together to discuss the scope of the denial and how to resolve the denial. Notice of rejection is a common thing, and you will receive a notice of refusal at least once, especially in the case of a utility patent application. We have successfully resolved the rejection by countering the denial or amending the application to resolve the reasons for the rejection. In particular, in the case of a second rejection notice or a final rejection notice, conducting a telephone interview with the examiner is very effective in resolving the rejection.

Even if you have not filed a patent application with us in the first place, please contact us if you have any questions regarding the USPTO’s notice of rejection.

4. Design Patent Application

Duration

Design patents are valid for 15 years from the date of issuance.

Judgment on design patent infringement.

Egyptian Goddess, Inc. v. Swisa, Inc. ruled that the Federal Circuit Court set a new standard for patent infringement. The Federal Circuit Court ruled that patent can be infringing if it looks “substantially similar” in the eyes of “ordinary observer”.

5. International Patent

International Patent Application and Patent Cooperation Treaty (PCT)

Because jurisdiction is established, Patent applications are only accepted in the country in which the application is filed. Therefore, in order to have a patent right in another country, you must apply for a separate patent in that country. Application for a foreign patent is complex, so below we will look at some of the strategies you can consider after applying for a patent in the United States.

     I. Why apply for an international patent?

Patent applications submitted in the United States are only effective in the United States and are not internationally accepted. In order to obtain an international patent right, you must apply directly to each country because each country has different patent laws. But instead, you can obtain patents in multiple countries with a single patent application through the Patent Cooperation Treaty (PCT). We’ll explain this in more detail below.

So why apply for an international patent? The main reason is to be protected in other countries where you are doing business or intend to do business in the future. By filing a patent application and registering a patent in a country where you do business, you can exercise a patent right against a patent infringer or use it to file a complaint. It can be of political importance, especially if you’re doing business with the government.

     II. Which countries should I apply for a patent?

Simple patent applications can be made in countries where you wish to enforce a patent, but there are also a number of other considerations. The first thing to consider is the country where the transaction takes place, where the consumer sits or where the production is currently in business. Other considerations include where the competitors are located and the countries in which the patent can be used for aggressive purposes, or countries that will earn money through licensing or sales.

In reality, however, because the cost of applying for a foreign patent can be very high, cost-benefit analysis must be done, and it should be taken into account that all countries and jurisdictions have a sophisticated patent system that can realistically enforce patent rights. A company’s overall patent-related goals must be consistent with the company’s budget, analysis of patent jurisdictions, competitors or licensing targets in that country, and time constraints that make patent application impossible after a certain period of time. With respect to the application period, the Patent Law is particularly sensitive to the period restraint, so it may not be possible to apply at all if you fail to apply within the specified time frame abroad. The application period will continue further below.

In general, however, most companies see the United States and Europe as the most important countries in patent applications. Other countries that need to be applied may vary depending on the type of invention you want to protect. Medical equipment is mainly patented in Europe, Japan, China, Korea, Canada, Mexico, and Australia, and “technology” patents are generally made in Europe, Korea, Japan, Taiwan, India, China, Canada, Brazil, Russia, and Australia.

     III. How do you apply for an international patent?

     A. Apply patents directly from other countries

If you decide to apply for a patent in one or two countries, we recommend that you apply directly to that country. This must be done within 12 months from the date of the first U.S. patent application. Some people first apply for U.S. patent, and apply for international patents after receiving permission to apply for foreign patent. Due to the cost of applying for a patent, the translation fee, and the necessary patent attorney or agent’s cost to the government, foreign patent applications can become very expensive. So if you want to apply in multiple countries, applying for a patent directly in those countries can be costly and time-consuming. In this case, the Patent Cooperation Treaty (PCT) may be a good alternative.

     B. Patent Cooperation Treaty (PCT)

Instead of applying directly to countries, you can streamline the international application process through the Patent Cooperation Treaty. If you submit a single patent cooperation treaty application within 12 months of filing a U.S. Patent Application, you may have a priority date for all Patent Cooperation Treaty members. For example, if you want to protect a patent in six different countries, you can apply for just one patent cooperation treaty application on the premise that all those six countries are a member of the Patent Cooperation Treaty. This will give you priority date for U.S. patent applications in each country. Refer to the patent cooperation treaty member countries (https://www.wipo.int/pct/en/pct_contracting_states.html). The National Stage Application for Individual Countries is available within a total of 30 months (31 months in some countries) from the date of application for a U.S. patent. The biggest benefit of this is that you can postpone the deadline if you have not fully decided which countries you want to have your patent protected. If you do not currently have a budget to apply for a patent in multiple countries, you can keep your rights for 30 months by filing a single Patent Cooperation Treaty (PCT) application, and you can determine which countries you want to file for a patent. Note in the Patent Cooperation Treaty (PCT) that at least one of the patentees or inventors must be a U.S. citizen or resident, and if not, the application for the Patent Cooperation Treaty (PCT) must be filed in another country.

     IV.  When should I apply for an international patent?

This is probably the most important thing. In general, international applications (or application for a patent cooperation treaty) must be made within 12 months from the priority date of the U.S. patent application. Therefore, if the first application is a U.S. utility patent application, it is 12 months after the filing date. Assuming that you have applied for a patent cooperation treaty within a period of time under the Paris Convention, you can benefit from the date of your previous application from an international application or a Patent Cooperation Treaty (PCT) application, just as the date of application for an international application will be the same as the date of the previous application. How will this affect provisional applications in the United States? If the application is filed first, it must be filed internationally within one year of filing the application. In the case of direct filing, you must obtain a Foreign Filing License before applying in a foreign country. However, the Foreign Filing License is not required to apply through the U.S. Patent Office if you apply for the Patent Cooperation Treaty (PCT).

If you have applied for the Patent Cooperation Treaty (PCT) one year before the date of application for a utility patent application (or application for a provisional application), you will receive an additional 18 months to apply for the National Stage Application in the designated country when applying for the Patent Cooperation Treaty (PCT).

There are several ways to apply internationlly, but here are some common ways:

(1) Filing a U.S. Utility Patent Application (Regular Application/Nonprovisional);

(2) After applying for the Patent Cooperation Treaty (PCT) within one year

(3) Following the national stage filing process within 30 months from the date of the first U.S. utility patent application application

6. Track One examination of patent application

The patent process is generally complex, the risk of rejection is high, and it takes a very long time from the initial application to the last approval. In the United States, a utility patent application can take approximately three years to issue and sometimes even longer. However, the U.S. Patent and Trademark Office offers a variety of priority processing programs and other options that can be processed quickly. Currently, the most well-known is a track one patent examination.

Basic information of track-one priotized examination

Trackone prioritized examination is currently a pilot program, but it is the most popular way to expedite patent applications. Track one will apply for a utility or plant patent application as a “request” and can reach the final stage within 12 months. You can also apply for track one when applying for a continuation application and an RCE application. Until 2018, the average time it takes to receive the first notice from the patent application is within two months, and within seven months from the patent application to the final stage (final rejection, waiver notice or notice of approval). Current application costs are $4,000, $2,000, and $1,000, respectively, depending on whether you are a large entity, small entity, or micro entity, including processing costs and basic application fees (see table below). The USPTO receives up to 10,000 requests each fiscal year. Track one is also limited to four independent claims and 30 dependent claims. What’s interesting is that the 2016 record shows a higher approval rate if you applied for track one. (84.9% v. 69.2%)

It should be noted that trackones expedites application process, so applicants also have to meet this pace, and if they don’t, the trackone will be cancelled. For example, when a track member’s priority examination is 1) applying for an extension of the period in connection with the application; 2) Immediately after the USPTO sent the “Final” letter; 3) When the applicant requests a reexamination request; 4) if the applicant appeals; Or 5) If the applicant modifies the application in excess of four independent claims and 30 dependent claims, it will be cancelled. In addition, track one is not possible in the case of us national phase entry (originally filed in a foreign country and then entering the U.S. domestic stage as a priority date for a foreign application) or in the case of re-issuance applications, initial design patent applications, pending applications, and reexamination procedures. However, as mentioned above, track one can be used to request for RCE and re-examination.

Requirements when applying for track one

The USPTO receives up to 10,000 track one requests each fiscal year.

You can check the status in the following link. USPTO

Other requirements include:

Track one request must be requested on the same date as the patent application date. If you wish to request a track one after filing an application, you must apply it with request for continued examination and pay all application and track-one costs;

(2) specification, drawings, claims (multiple independent claims are not allowed, and cannot exceed four independent claims and 30 dependent claims);

(3) The inventor’s declaration and application paper;

(4) the cost of the application to be described later;

(5) Priority examination costs;

(6) Processing costs

Check USPTO Link

The cost of utility patent application with track one examination by USPTO as of June 2020.

Cost detail	Micro Entity*	Small Entity	Large Entity
Utility Patent Filing	430 USD	785 USD	1,720 USD
Request for prioritized exam	1,000 USD	2,000 USD	4,000 USD
Processing Fee	35 USD	70 USD	140 USD
Total cost (excluding fees for excessive claims)	1,465 USD	2,855 USD	5,860 USD

Cost Summary :

Utility Patent Application fee incl. Attorney, Drawing & USPTO fee: $8,000 in total.

Design Patent Application fee incl.Attorney, Drawing & USPTO fee: $3,000 in total.

Additional ways to get patent issuance faster

There are several ways to expedite the examination process, such as accelerated examination, patent prosecution highway/PPH, and expedited examination for a design patent application. You can compare them in https://www.uspto.gov/patent/initiatives/patent-application-initiatives/uspto-patent-application-initiatives-prior. You can also check patent’s progress by simply contacting the patent examiner. Examiners often process large numbers of patent applications, but they might check your application first if you request for your patent’s progress.

Similarly, if there is any uncertainty on both sides after receiving the U.S. Patent Office notice, it may be helpful to ask the examiner for an interview. You will not be charged for requesting an interview, and the acceptance of the interview will be left at the discretion of the examiner after the final notice. However, the request will generally be accepted before that. Talking to an examiner about a notice can help you get a notice of approval quickly.

III. How do I exercise my copyright?

Simply, we will prepare and apply for copyright registration. Why is it important to have a registered copyright?

* Registering officially record the copyright, and will notify the world.

* Registration is a prerequisite for filing a copyright infringement lawsuit in the United States.

* If you register a copyright within five years of copyright and publication/release, it acts as evidence to estimate the validity of the facts on the certificate.

* If your work was copyrighted prior to copyright infringement, you can claim certain additional damages. In addition, the winning party may be entitled to attorney’s fees. If you are not registered in advance, you will only be entitled to compensation for actual damages incurred. (Must register a copyright prior to filing a complaint)

* Registration allows the copyright holder to apply to the U.S Customs and Border Protection to prevent the import of infringing work.

IV. What are the subjects of copyright registration?

There are limitless things that can be registered as copyright.

The copyright subject can include things such as Novel/non-fiction manuscripts. computer  website, , music, book, thesis papers, collective work, program, advertisement, reference work, report, binding/sheet book, data or other literary collection, brochure, pamphlet, catalog, single song in a music album, confidential tests, speech, article, online work, textbook, game, poster, commercial prints, label, drawing, photo, wall photo, sculpture, montage, advertising stickers on car bumpers, printed drawings, miniature, illustrations applied to clothing or other practical items, dolls, toys, sewing patterns, knitting, crochet, embroidery, artificial flowers and plants, mosaic replicas, lithographs, original works, textile, wallpaper designs, puzzles, enamel works, record jacket photos or illustrations, greeting cards, postcards, stationery, stained glass design, color types, embroidery and craft kits, cartoons, hologram, hologram and laser illustrations, maps, and etc.

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.

Fee

$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;
• 3^rdparties 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.

5. Apparel and trademark issues
6. Prohibition of Domain Preemption and UDRP (Unified Domain Name Dispute Resolution Policy)
7. Responding to fair use of trademark
8. Trademark branding