The complete guide to trade marks in the United States of America

The United States is the biggest economy in the world and the most common international destination for Australian trade mark owners. Securing trade mark protection in the US is essential if you're targeting American consumers.

However, the US trade mark system is stricter than Australia's. This guide covers everything you need to know, from searching and filing through to examination, opposition, and renewal.

Why register a trade mark in the United States?

A US trade mark gives you exclusive rights to use your mark in the world's largest consumer market. This exclusivity enhances your brand's visibility and integrity, boosting customer trust.

A registered trade mark also means you're not inadvertently infringing another trader's rights. If you're selling products or services in the US without checking, you could face costly litigation.

Conducting a trade mark search in the US

Before filing, searching for existing marks on the US register is essential.

The primary resource is the USPTO's trademark search database. You can also search via WIPO's global brand database.

Tips for an effective US trade mark search

• Use broad search terms — include variations, synonyms, and phonetic similarities
• Examine related industries — ensure the search covers goods and services closely related to yours
• Don't rush — even minor similarities can cause issues under the USPTO's strict examination standards
• Conduct regular searches — a search gives you a snapshot in time. If you don't file immediately, you'll need to search again

The USPTO receives far more applications than most other countries, so the likelihood of encountering a similar mark is higher. We recommend using professionals for US trade mark searches. Contact Markster to discuss.

How to register a trade mark in the US

You can file a US trade mark either directly through the United States Patent and Trademark Office (USPTO) or via the Madrid Protocol using your Australian trade mark as a base.

The Madrid Protocol allows you to submit a single application for protection in multiple countries, making it more cost-effective and easier to manage.

Key steps

1. Prepare your application — gather your trade mark details, a clear reproduction, and a list of goods and services.
2. Determine goods and services — ensure the list matches or is narrower than your Australian registration. The USPTO requires much more specific descriptions than IP Australia.
3. Submit the application — either through the USPTO (requires a US-licensed attorney) or via the Madrid system.
4. Respond to the USPTO — be ready to address any requests for additional documentation or objections.

If you're filing within 6 months of your Australian application, you can claim the priority date.

How long does registration take?

Straightforward applications may complete in around 7 months. Contested filings can take significantly longer.

For guidance tailored to your situation, contact Markster.

Do you need a lawyer for a US trade mark?

Yes, in most cases. Foreign applicants without a US address must be represented by a US-licensed attorney when dealing directly with the USPTO.

However, if you're filing through the Madrid Protocol, you don't need a US lawyer unless issues arise with your application. Most Australian businesses use Australian trade mark lawyers (like Markster) to file Madrid applications, and we can connect you with US counsel if needed.

Why professional help matters in the US

• The USPTO is stricter than IP Australia — objections are more common
• Goods and services descriptions must be far more specific
• Missing deadlines or responding incorrectly can harm your case
• A US-licensed attorney is required to file evidence of use on your behalf

Understanding trade mark examination in the US

US trade mark examination is more challenging than in most other countries. The USPTO examines on both absolute and relative grounds.

Why US examination is stricter

• Goods and services — examiners require much more specific descriptions than Australia
• Volume of trade marks — the sheer number of US registrations increases the likelihood of cited conflicts
• Higher descriptiveness standards — marks that would be accepted in Australia may be refused in the US

Common reasons for refusal

• Likelihood of confusion with an existing mark covering related goods or services
• Descriptive or not sufficiently distinctive
• Unacceptable goods and services descriptions
• Conflict with well-known marks

Responding to a refusal

If the USPTO issues a refusal, review the notice carefully, gather evidence or arguments to address the issue, and engage a trade mark lawyer. You can generally request extensions if you need more time.

Trade mark opposition and cancellation in the US

Opposition

After examination, accepted marks are published in the USPTO Trademark Official Gazette. Third parties have 30 days to file an opposition (extendable up to 180 days).

The US uses a pre-grant opposition system where both absolute and relative grounds can be used. This means someone can challenge your mark even if they don't own a similar trade mark.

Cancellation

Trade mark cancellation can occur post-registration if:

• The mark infringes on existing rights
• The mark isn't being used in commerce
• The registration was obtained fraudulently

Cancellation proceedings are handled through the USPTO's Trademark Trial and Appeal Board (TTAB).

Tips to avoid opposition

• Conduct thorough clearance searches before filing
• Ensure your mark is distinctive and unique
• File with complete and accurate details
• Monitor the Official Gazette for potential conflicts

Maintaining and renewing your US trade mark

The US has the most demanding maintenance requirements of any major trade mark jurisdiction.

Ongoing maintenance obligations

You must submit evidence of use to the USPTO:

• Between years 5 and 6 after registration (Declaration of Use)
• Between years 9 and 10 (combined Declaration of Use and Renewal)
• Every 10 years thereafter

Each filing requires:

• An affidavit or declaration of use
• A verified statement confirming use in commerce
• At least one specimen demonstrating commercial use for each class

Failing to file these declarations will result in cancellation of your registration.

Renewal

Trade marks are renewed every 10 years. The USPTO charges $225 USD per class for renewal, with additional fees for late submissions. A US-licensed attorney must file the evidence on your behalf.

What happens if you don't maintain your mark?

• Your registration will be cancelled
• Your brand becomes vulnerable to infringement
• Re-registering is significantly more complex and costly

Markster can manage your US trade mark maintenance and renewal deadlines — get in touch.

Costs

For a full breakdown of government fees, see our guide on how much it costs to file a trade mark in the United States.

Need help?

Whether you're filing a new application, responding to a USPTO office action, or managing an opposition, contact Markster for expert guidance on US trade marks.

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Please note, the information in this article is general in nature and is not legal advice. You should seek independent legal advice tailored to you and your circumstances.