How to register a trade mark in the United States

If you are an Australian business looking to protect your brand in the United States, you need a US trade mark registration. Your Australian trade mark does not protect you in the US, and operating without one risks costly infringement disputes.

The United States is the world's largest consumer market and the most common international destination for Australian trade mark owners. However, the US trade mark system is stricter than Australia's — from more demanding examination standards to ongoing proof-of-use requirements that can catch the unprepared off guard.

This guide covers every stage of the process, from searching and filing through to examination, opposition, maintenance, and renewal.

Overview of the US trade mark registration process

Registering a trade mark in the United States involves the following stages:

1. Search — check the USPTO database for conflicting marks
2. File — submit your application directly with the USPTO or via the Madrid Protocol
3. Examination — a USPTO examining attorney reviews your application on both absolute and relative grounds
4. Publication — accepted marks are published in the Official Gazette for opposition
5. Opposition period — third parties have 30 days (extendable) to oppose
6. Registration — if no opposition succeeds, your mark proceeds to registration
7. Maintenance — ongoing declarations of use and renewal every 10 years

The entire process takes around 7 months for straightforward applications, though contested filings can take significantly longer.

Trade mark search in the United States

Before filing, searching for existing marks on the US register is essential. The US receives far more applications than most other countries, so the likelihood of encountering a similar mark is higher.

How to search the US trade mark register

The primary resource is the USPTO's trademark search database. You can also search via WIPO's global brand database, which is useful if you are filing in multiple countries.

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
• Search state registers too — the USPTO database only covers federal registrations. State-level registrations and common law rights can also create conflicts

We recommend using professionals for US trade mark searches. Contact Markster to discuss.

Filing requirements for a US trade mark

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.

What you need to file

• A clear reproduction of your trade mark (word mark or logo)
• A detailed list of goods and services — the USPTO requires much more specific descriptions than IP Australia
• Owner details and contact information
• A US-licensed attorney (required for foreign applicants filing directly)
• Filing fees

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. Choose your filing basis — either "use in commerce" (if already using the mark in the US) or "intent to use" (if you plan to use it)
4. Submit the application — either through the USPTO (requires a US-licensed attorney) or via the Madrid system
5. 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.

Examination process for US trade marks

US trade mark examination is more challenging than in most other countries. The USPTO examines on both absolute and relative grounds, meaning examiners will refuse your application if it conflicts with an existing mark — unlike some jurisdictions that leave this to the opposition process.

What USPTO examiners look for

• Distinctiveness — is your mark capable of distinguishing your goods or services?
• Likelihood of confusion — does your mark conflict with any existing registrations or pending applications?
• Goods and services descriptions — are they sufficiently specific and acceptable under USPTO standards?
• Specimens of use — if filing on a "use in commerce" basis, do your specimens demonstrate genuine commercial use?

Why US examination is stricter than Australia

• 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
• Specimen requirements — the USPTO scrutinises specimens of use more carefully

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
• Merely ornamental use of the mark

Responding to a refusal (office action)

If the USPTO issues an office action (refusal), you typically have 3 months to respond (extendable to 6 months). You should review the notice carefully, gather evidence or arguments to address the issue, and engage a trade mark lawyer. A well-crafted response can often overcome the refusal.

For more on responding to examination reports generally, see our guide on how to overcome a trade mark examination report.

Opposition and cancellation in the United States

Opposition

After examination, accepted marks are published in the USPTO Trademark Official Gazette. Third parties then have 30 days to file a notice of opposition (extendable up to 180 days by request).

The US uses a pre-grant opposition system. Grounds for opposition include:

• Likelihood of confusion with an earlier mark
• The mark is merely descriptive or generic
• The mark was filed in bad faith
• The mark is primarily a surname without acquired distinctiveness

Opposition proceedings are handled by the Trademark Trial and Appeal Board (TTAB), which operates similarly to a court proceeding with discovery, evidence, and oral hearings.

Cancellation

Trade mark cancellation can occur post-registration if:

• The mark infringes on existing rights
• The mark is not being used in commerce
• The registration was obtained fraudulently
• The mark has become generic

Cancellation proceedings are also handled through the 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
• Consider trade mark monitoring to catch conflicting applications early

Using a lawyer or agent for a US trade mark

Foreign applicants without a US address must be represented by a US-licensed attorney when dealing directly with the USPTO. This is a mandatory requirement, not optional.

However, if you are filing through the Madrid Protocol, you do not 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.

When you need a US-licensed attorney

• Filing a direct application with the USPTO
• Responding to an office action (refusal)
• Filing evidence of use (declarations of use and specimens)
• Handling opposition or cancellation proceedings

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

Contact Markster to discuss your US filing strategy. We work with trusted US counsel and can coordinate everything for you.

Maintaining and renewing your US trade mark

The US has the most demanding maintenance requirements of any major trade mark jurisdiction. Unlike Australia, you must file periodic declarations of use to keep your registration alive.

Ongoing maintenance obligations

You must submit evidence of use to the USPTO at the following intervals:

• Between years 5 and 6 after registration — Declaration of Use (Section 8 affidavit)
• Between years 9 and 10 — combined Declaration of Use and Renewal (Sections 8 and 9)
• Every 10 years thereafter — combined Declaration of Use and Renewal

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
• Government fees

What happens if you miss a maintenance deadline?

• Grace period — there is a 6-month grace period after each deadline, but additional fees apply
• Cancellation — if you miss the grace period, your registration will be cancelled
• No reinstatement — unlike some jurisdictions, the USPTO does not allow reinstatement. You would need to file a new application

Renewal

Trade marks are renewed every 10 years alongside the Declaration of Use. The USPTO charges USD 225 per class for renewal (at the time of writing), with additional fees for late submissions. A US-licensed attorney must file the evidence on your behalf.

Key differences from Australia

In Australia, renewal is a straightforward administrative process with no proof of use required. In the US, you must demonstrate that you are actively using the mark in commerce at every maintenance and renewal deadline.

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

Costs of registering a trade mark in the United States

Government fees for a US trade mark application start at approximately USD 250 per class (TEAS Plus filing), with additional fees for office action responses, declarations of use, and renewals.

For a full breakdown of government fees and professional costs, see our detailed guide on how much it costs to file a trade mark in the United States. You can also use our international filing fee calculator to get an instant estimate.

Filing a US trade mark from Australia

If you are an Australian business looking to register in the US, here are some practical tips:

• Use the Madrid Protocol — filing via Madrid through IP Australia avoids the mandatory US attorney requirement (unless issues arise). See our guide on filing directly or using WIPO
• Tighten your goods and services — the USPTO requires far more specific descriptions than IP Australia. Review your specification before filing
• Claim priority — if you file within 6 months of your Australian application, you can claim the earlier priority date
• Budget for maintenance — unlike Australia, US trade marks require periodic declarations of use. Factor this into your long-term costs
• Consider timing — if you plan to file in multiple countries, coordinate your filings to take advantage of the 6-month priority window
• Plan for specimens — start collecting evidence of use in the US market early, as you will need it for both registration (if filing on a use basis) and maintenance

Frequently asked questions

How long does a US trade mark registration last?

A US trade mark registration lasts 10 years, but you must file a Declaration of Use between years 5 and 6 to keep it alive. Renewal is required every 10 years thereafter.

Can I file a US trade mark without using the mark in the US?

Yes. You can file on an "intent to use" basis. However, you must eventually file a Statement of Use showing actual use in US commerce before the mark will register.

Do I need a US lawyer to file a trade mark?

If you file directly with the USPTO and do not have a US address, yes — a US-licensed attorney is required. If you file through the Madrid Protocol, a US lawyer is not required unless issues arise.

What is a TTAB proceeding?

The Trademark Trial and Appeal Board (TTAB) handles opposition and cancellation proceedings. It operates similarly to a court, with discovery, evidence, and hearings, but decisions are limited to the right to register (not infringement).

Can I use my Australian trade mark as a basis for a US filing?

Yes, through the Madrid Protocol. Your Australian trade mark (registered or pending) can serve as the base mark for an international application designating the US.

What happens if I don't file my Declaration of Use on time?

Your registration will be cancelled. There is a 6-month grace period with additional fees, but if you miss that too, the registration is permanently lost.

Need help with a US trade mark?

Whether you are filing a new application, responding to a USPTO office action, managing an opposition, or keeping your registration alive, contact Markster for expert guidance on US trade marks.

You can also explore our international trade mark filing guide to understand how the US fits into a broader international strategy.

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.