How to Protect Vietnamese Agricultural Brand Names as Certification Trademark in the United States of America?

(1) the legal name and physical address of the applicant

(2) the applicant’s legal entity type

(3) the applicant’s citizenship or the jurisdiction under whose laws the applicant is organized, and if the applicant is a domestic partnership or joint venture, the names and citizenship of the general partners or active members of the joint venture

(4) a description of the mark if the mark is not in standard characters

(5) a translation/transliteration of any foreign wording in the mark;

(6) a drawing of the mark sought to be registered;

(7) a filing fee of 250US$ or 350US$ per class subject to a TEAS plus or standard application

(8) a filing basis, including: (a) verification of certain statements signed by the applicant or a person properly authorized to sign on behalf of the applicant; (b) a statement specifying what the applicant is (or will be) certifying about the goods or services; (c) a copy of the certification standards governing use of the certification mark on or in connection with the goods or services (required for Section 1(a) applicants only); and (d) a statement that the applicant is not engaged (or will not engage) in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant

(9) a list of the particular goods or services on or in connection with which the applicant’s authorized users use or intend to use the mark

(10) classification in U.S. Class A for goods or U.S. Class B for services

A certification mark filed with the USPTO shall be examined as if it is an ordinary mark, specifically the certification mark as filed shall be evaluated as to both absolute refusal grounds and relative refusal grounds. In 3-4 months, if the USPTO finds no grounds for refusal, it approves and publishes your certification trademark on the gazette for opposition purpose in a 30-day period of time. Subject to which the filing basis was chosen, and in the absent of opposition, a certificate of trademark registration will be issued by the USPO in approximately 2 months after the expiry of opposition time limit.

a.    Between the fifth and sixth years after the registration date, a Section 8 declaration applicable for all trademarks registered under any of Sections 1(a), 1(b), 44(d) and 44(e), or a Section 71 declaration applicable for those registered under the Madrid Protocol-based international registration, must be filed with the USPTO against a fee of 225US$ per class.

b.    Between the ninth and tenth years after the registration date for the non-Madrid based certification mark, a Section 8 declaration combined with a Section 9 renewal application must be submitted with the USPTO against a fee of 525US$ per class.

c.    Between the ninth and tenth years after the registration date for the Madrid Protocol-based certification mark, you must both submit (a) a Section 71 declaration with the USPTO, and (b) a request for renewal of international registration with the WIPO.

1To understand filing basis under the US trademark law, see more “The hoops to jump through for global brand protection” at the link: https://www.vir.com.vn/the-hoops-to-jump-through-for-global-brand-protection-84020.html%C2%A0