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Filing Basis for Trademark Application
06.24.2021

Filing Basis for Trademark Application

In Taiwan, there is no so-called filing basis for trademark application. However, when you need to file a trademark application in the United States, the application case in Taiwan would be crucial. Practical execution and opinions with regards to filing bases are as follows.

There are multiple filing bases on trademark application in the United States. For example, “intent-to-use”, “used-in commerce”, and “foreign registration”. Among them, you must provide a certificate of use in the United States after approval for “intent-to-use”, while for “used-in commerce”, you must attach a concrete evidence of use in the United States when the application is filed. In view of the fact that clients often have not yet used their trademark at the time of approval or the evidence of use is not officially accepted, “foreign registration” is a wise choice.

The first requirement of foreign registration is an application/approval case from the home-country of the applicant and hence he could proceed the application. Nevertheless, there are other considerable concerns as well. For example, for a Taiwan case: If you apply/register for 20 items in the Taiwan case, you must apply for same products/services consistently with no more than 20 items in the U.S. case. If you have not obtained a registration certificate for the Taiwan case when you apply for a U.S. case, but the U.S. case has been approved, you could request for a postponement from the U.S. authorities and supplement it when you are granted an approval regarding the Taiwan case.

The advantage of foreign registration is that there is no need to provide additional proof of use, and the chance of being officially rejected is lower than that of “intent-to-use” and “used-in commerce”. Notwithstanding, it is notable that “If your Taiwan case is rejected officially and cannot obtain registration, your U.S. case will also be affected.” Under this circumstance, you will need to amend the filing basis in order to keep the U.S. case continue.

It can be seen from the above that all filing bases are being used in the United States. For clients who have been working in the U.S. market for long, “used-in commerce” is an ideal basis, whereas for clients who are starting out, “intent-to-use” and “foreign registration” would be other good choices. However, there are many things to note on actual execution in order to prevent disapproval or rejection from the authorities. You can go to the official website of the United States Patent and Trademark Office for relevant information, or consult an experienced agent. With suggestions from the agent, you could avoid time-consuming inquiry process and unnecessary waiting time and get your trademark registered promptly!

Benny Kong & Tsai © 2021
 

Benny Kong & Tsai, Solicitors

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