The United States is the most important single market for cross-border e-commerce and one of the most idiosyncratic trademark jurisdictions: rights are rooted in "use," filing bases come in four types, and post-registration maintenance deadlines are strict. This guide covers the complete operational framework from application to maintenance.
1. Three Decisions Before Filing
1. Applicant entity
- Apply in the name of the company that actually owns the brand business, avoiding the ownership hazards of personal-name filings;
- The name will appear on the registration certificate and will govern Amazon Brand Registry and enforcement later;
- Non-US applicants must file through a US state-licensed attorney; when choosing an agent, verify the authenticity of its US attorney resources and beware of cheap unlicensed agents.
2. Choice of filing basis
- 1(a) use in commerce: already selling in the US (including cross-border sales shipped from China); specimens of use are filed with the application — the fastest route to registration;
- 1(b) intent to use: not yet used but with a bona fide intent; examination first, evidence later — the SOU is due within six months of the NOA, with up to five extensions;
- 44(e) based on foreign registration: registration in the US without use evidence on the strength of a Chinese registration, but genuine use evidence is still required at the Section 8 stage in years 5–6;
- 44(d) priority: claiming priority within six months of the home filing; usually combined with one of the bases above.
Rule of thumb: already selling → 1(a); selling within six months → 1(b); home registration granted and unwilling to submit evidence for now → 44(e).
3. Mark format and goods description
- A standard character word mark offers the broadest protection, unlimited by font or color, and the best fit for Amazon Brand Registry — the preferred choice;
- If you have a distinctive logo, file a separate word-and-design mark as a supplement;
- The goods description must conform to the wording of the USPTO Acceptable Identification of Goods and Services Manual (ID Manual); copying the Nice Classification or a literal translation of the Chinese application will certainly draw a requirement to amend.
2. Application and Examination Process
Timeline:
- File the application; an application number is issued in about 3–5 business days;
- Substantive examination by the examining attorney: an Office Action or direct publication in about 6–9 months;
- A 30-day opposition period with no opposition filed or opposition unsuccessful;
- 1(a) applications proceed directly to registration; 1(b) applications receive a Notice of Allowance (NOA) and register after the SOU is filed.
The whole process takes about 8–14 months if smooth.
Common Office Action types and responses:
- Goods-description amendment: rewrite per the examining attorney's suggestion into ID Manual wording — the simplest;
- Unacceptable specimen: the specimen must show the mark in actual commercial use — the physical product, packaging, labels, or a webpage with a purchase button; mock-ups, renderings and screenshots without a purchase entry are all refused;
- Prior similar mark (2(d) refusal): argue non-similarity, delete goods, or negotiate a consent letter with the prior right holder;
- Descriptiveness/lack of distinctiveness: argue inherent distinctiveness, claim acquired secondary meaning (requires extensive use evidence), or move to the Supplemental Register as a transition.
3. Compliance Points for Specimens of Use
The US is the strictest country on use evidence, and the USPTO's crackdown on fake specimens has been escalating since 2021:
- Authenticity: the evidence must come from real sales scenarios; photoshopped images and Taobao-style white-background shots are extremely risky, and a finding of fraud can void the entire case;
- Consistency: the mark on the specimen must be identical to the applied representation — no distortion or added wording;
- Relevance: the evidence must correspond to the specific goods applied for; evidence of selling product A cannot support product B;
- Timing: for 1(a) the use date must predate the filing date; for the SOU the use date must predate the SOU filing date;
- Retention system: archive dated orders, shipping records, ads and invoices routinely to build an evidence library.
4. Post-Registration Maintenance Milestones
Section 8 declaration of use:
- First filed in years 5–6 after registration, with current specimens of use;
- Filed again with each renewal (every 10 years) — years 9–10, 19–20, and so on;
- A six-month grace period is available (with a surcharge); after that the registration is cancelled irrevocably;
- Proactively delete goods no longer in use to avoid exposure if selected in a post-registration audit.
Section 15 declaration of incontestability: after five consecutive years of use, file it together with Section 8; the registration acquires incontestable status, significantly enhancing stability.
Renewal: every 10 years, handled together with Section 8.
5. Using and Enforcing the Right
- Amazon Brand Registry: enroll with the registration number (or even a pending application) to gain hijacker complaints, A+ Content and other benefits;
- ® notice: the ® symbol may be used only after registration; only ™ may be used while the application is pending, and false marking is unlawful;
- Customs recordation: record your IP with US Customs and Border Protection (CBP) to intercept counterfeit imports;
- Enforcement channels: platform complaints, TTAB opposition/cancellation proceedings, and federal court litigation (Schedule A mass litigation is a common tool against hijackers).
6. Common Pitfalls Checklist
- Using an unqualified agent that files with a fake US address, triggering USPTO sanctions that void entire batches;
- Forgetting the SOU deadline after a 1(b) filing and losing the application;
- Overclaiming goods, then needing use evidence for every item later and deleting items under pressure;
- Fabricating evidence, then having the registration overturned post-grant by a third party or a USPTO audit;
- Shelving the mark after registration without use, then failing the Section 8 filing in years 5–6 and being cancelled;
- Registering only a word-and-design mark and getting stuck in Amazon Brand Registry over wording inconsistency — file the word mark first.
7. Cost Reference
Official fees are charged per class (TEAS Plus starts at about USD 250 per class, provided all wording comes from the ID Manual); US attorney fees are additional. The total first-class cost is typically in the range of several thousand RMB — far below the cost of post-squatting relief.
8. Where to File
For the specific handling of the matters above, you can book a US trademark registration with MyTMBee, where a registered agent will assist throughout the process.