Trademark filing in the USA, priority question
One of our clients would like to file a US trademark application, claiming priority to Singapore Trade Mark Application No. xxxx which was filed on xx November 2020.
The trademark application in Singapore is currently under examination, as the Examiner has raised a specification objection. Attached is a short response we have filed on yy February 2021 to propose amendments of the description of goods. We are currently waiting for the Examiner’s reply.
In the meantime, we have been informed by the client that the relevant product may not be ready before the year 2023.
We were wondering if there is a way to delay the trademark registration process in the US so that the relevant deadlines for proving the use of the mark in the US would be shifted to a later date?
Here is what you can do.
File an application in the US based on BOTH (a) Singapore Trade Mark Application No. xxxx filed on 24 November 2020, AND (b) a bona fide intent to use (ITU) the mark in the US. The ITU basis is a fail-safe in the event the SG application never registers.
Upon a determination that the mark is allowable in the US, the Examiner would suspend prosecution pending the registration of the priority SG application. This suspension can last until the SG application registers or goes abandoned.
Once the priority SG application registers, you can remove the US application from suspension and advance the US application to registration based solely on the SG registration and without having to prove use of the mark in the US. Please note that if you use the SG registration as a basis for registration in the US, then the US goods would need to be consistent with the SG goods as registered.
However, if the SG application goes abandoned, only then would you need to rely on use in commerce in the US in order to achieve registration.
Therefore, assuming the SG application advances to registration, which seems to be the case from the Response to Refusal, you would not need to worry about whether the relevant product is in use in the US before the registration comes up for renewal in around 2027 (assuming the US application registers in 2022).