A European technology company launches its product in the United States under a brand it has used for years at home. Six months later, it receives a cease-and-desist letter from a domestic competitor who filed for the same mark first. The company has strong common law rights in Europe, but in the US, federal registration priority controls the outcome. Without a registered trademark on the Principal Register (the main federal trademark registry administered by the United States Patent and Trademark Office), the European company faces costly litigation. and may be forced to rebrand entirely.
Trademark registration in the United States is governed by federal intellectual property legislation and administered by the USPTO, the federal authority responsible for IP registration. The process runs from initial clearance through examination, publication, and final registration – typically requiring between 12 and 18 months from filing. Foreign applicants must retain a licensed US attorney to file and prosecute the application.
This guide covers each procedural step in sequence, the documentary requirements at each stage, realistic cost ranges. The most common errors made by international businesses. Additionally, a decision checklist to help you choose the right filing strategy for your circumstances.
How the US trademark system works
The United States operates a use-based trademark system. Unlike many civil law jurisdictions, the US does not grant indefinite rights simply by filing. Rights attach to actual commercial use of the mark in connection with specific goods or services. Federal registration, however, provides nationwide constructive notice and creates a legal presumption of ownership – advantages that are difficult to replicate through common law use alone.
US intellectual property legislation establishes two primary routes to federal protection. The first is an in-use application (use in commerce basis), filed when the mark is already actively used in interstate or international commerce. The second is an intent-to-use application (ITU), filed when commercial use has not yet begun but the applicant has a genuine intention to use the mark. An ITU application secures a priority date from the filing date – a valuable advantage in a first-to-use system.
The scope of registration is defined by the Nice Classification system (the international classification of goods and services used across most major trademark registries worldwide). Each application covers one or more classes. US fees are assessed per class, so the choice of classes directly affects cost. Overly broad class selection inflates fees without providing proportionate protection; overly narrow selection leaves gaps that competitors can exploit.
A common misconception among international clients is that registration in their home jurisdiction – or via the Madrid Protocol – automatically confers US rights. A Madrid Protocol application designating the US is examined under US law by the USPTO and is subject to the same grounds for refusal as a direct national application. The procedural rules are identical; only the filing channel differs.
For businesses structured as a Delaware LLC or other US entity, trademark ownership should align with the entity that commercially exploits the mark. Mismatches between the applicant name and the actual commercial user create enforceability risks. Practitioners in the US note that ownership errors identified late in the process – or after registration – require formal assignment procedures before enforcement action is viable.
Step-by-step procedure and timelines
Step 1 – Clearance search (two to four weeks before filing). Before filing any trademark application, a professional clearance search is essential. The search examines the USPTO database, state trademark registers, and common law use sources. A mark may clear the USPTO database yet still conflict with an unregistered mark used in a specific geographic area. Practitioners experienced in US intellectual property matters routinely identify conflicts that self-searches miss.
Step 2 – Application filing (day one). The application is filed electronically through the USPTO's TEAS (Trademark Electronic Application System). Required elements include the applicant's legal name and address, a representation of the mark, the identification of goods and services in the correct Nice classification class or classes. The basis for filing (use in commerce or intent-to-use), and. for use-based applications. a specimen showing the mark in actual commercial use. Government filing fees are assessed per class at the time of submission.
Step 3 – USPTO examination (three to six months after filing). A USPTO examining attorney reviews the application. The examiner checks for absolute grounds refusal (descriptiveness, genericness, deceptiveness) and relative grounds refusal (likelihood of confusion with existing registrations). If the examiner identifies issues, an office action is issued. The applicant has three months to respond – extendable by up to three further months on payment of an extension fee. Failure to respond within the deadline results in abandonment of the application.
Step 4 – Publication for opposition (approximately 12 months after filing). Once the examiner approves the mark, it is published in the Official Gazette – the USPTO's weekly publication – for a 30-day opposition period. Any person who believes the registration would damage them may file a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB), the administrative tribunal that handles opposition proceedings and cancellation actions. Opposition proceedings resemble abbreviated litigation and can take 12 months or longer to resolve.
Step 5 – Registration or Notice of Allowance (13 to 18 months after filing). For a use-based application that survives opposition, the USPTO issues a certificate of registration. For an intent-to-use application, the USPTO issues a Notice of Allowance. The applicant then has six months – extendable in six-month increments for up to three years – to file a Statement of Use demonstrating actual commercial use. Registration issues only after the Statement of Use is accepted.
Step 6 – Post-registration maintenance. US trademark registrations are not perpetual without maintenance filings. Between the fifth and sixth year after registration, the owner must file a Declaration of Continued Use. A renewal application is required between the ninth and tenth year, and then every ten years thereafter. Failure to file on time results in cancellation of the registration.
For a tailored strategy on trademark filing and prosecution in the United States, reach out to our IP practice for the United States to discuss your specific mark and business scenario.
Documentary checklist and cost ranges
International applicants frequently underestimate the documentary precision required by the USPTO. The following checklist reflects the requirements that most commonly generate office actions when handled incorrectly.
- Legal name and domicile address of the applicant (individual or entity), with exact correspondence to the entity's formation documents
- A clear representation of the mark – either a standard character mark (word mark) or a stylised image in the required format
- An accurate identification of goods and services using accepted USPTO terminology within the correct Nice classification classes
- A specimen of use in commerce, for use-based applications – typically a photograph of the mark on packaging, a screenshot of a website displaying the mark alongside ordering functionality, or equivalent evidence
- A signed declaration confirming the applicant's belief in their right to use the mark and the accuracy of the application
The identification of goods and services is the single most frequent source of office actions filed by foreign applicants. US examiners apply strict standards to identification language. Descriptions accepted in European or Asian trademark offices are routinely rejected by the USPTO as overly broad or vague. Each class requires specific, item-by-item descriptions rather than general category headings.
Government fees are charged per class per application. The TEAS Plus application – which requires applicants to use pre-approved identification language from the USPTO's ID Manual – carries a lower per-class fee than the TEAS Standard application, which allows custom identification language. For applicants unfamiliar with the ID Manual, TEAS Plus can generate additional office actions that offset any fee saving.
Attorney fees in US trademark matters start from a few hundred dollars for straightforward word mark filings in a single class and rise substantially for multi-class applications, complex prosecution involving office actions, or opposition proceedings. Opposition matters before the TTAB – which can involve discovery, depositions, and briefing – carry legal costs comparable to commercial litigation before a US District Court.
Renewal and maintenance costs recur throughout the life of the registration. Budgeting for the five-to-six-year maintenance declaration and ten-year renewals at the outset avoids the loss of valuable registrations due to administrative oversight.
For businesses with technology-driven brands, the intersection of trademark protection and emerging AI-generated branding raises additional questions. Our analysis of AI and technology law in the United States addresses how intellectual property legislation applies to AI-created marks and product identifiers.
Common errors by foreign applicants and how to avoid them
International businesses filing in the US for the first time encounter a regulatory setting that differs substantially from civil law trademark systems in Europe and Latin America. Several errors appear with sufficient frequency that they merit explicit treatment.
Filing without a clearance search. Foreign applicants sometimes rely on the absence of identical marks in a USPTO database search to conclude the mark is registrable. US intellectual property legislation and case law developed by the Trademark Trial and Appeal Board apply a multi-factor likelihood-of-confusion test. Phonetically similar marks, visually similar stylisations, or marks used in related goods categories can each block registration. A professional search examines all of these dimensions; a basic database check does not.
Incorrect identification of goods and services. As noted above, USPTO identification standards are more exacting than those applied in most other jurisdictions. Identifications copied from European Union Intellectual Property Office registrations are frequently rejected. A common consequence is a non-final office action requiring amendment – adding cost and delay. Where the applicant's desired identification cannot be salvaged, the class structure may need to be rebuilt from scratch.
Misunderstanding the use requirement. A use-based application requires genuine, lawful use in commerce at the time of filing. Token use – placing a mark on a handful of products shipped across a state line solely to establish a filing basis – carries legal risk. The USPTO and US District Courts treat fraudulent specimens as a ground for cancellation. Intent-to-use filings, while they require a subsequent Statement of Use, are the technically cleaner approach for brands not yet commercially active in the US.
Failing to monitor and respond to oppositions. The 30-day opposition window after publication in the Official Gazette is not a formality. Competitors and brand owners conduct watch services and file oppositions as a competitive tool. An opposition that is not defended results in deemed abandonment of the application. Defense before the TTAB involves procedural rules that closely track civil procedure before federal courts – foreign applicants without US counsel are at a severe disadvantage in this setting.
Assuming registration is permanent. Many civil law jurisdictions require only a renewal every ten years, with minimal substantive maintenance obligations. The US system requires affirmative use declarations between years five and six after registration. Brands that have expanded globally sometimes allow US registrations to lapse through administrative oversight. Cancellation of a registration can be exploited by a competitor who then files for the same or similar mark.
International businesses operating across multiple jurisdictions should also consider how US trademark rights interact with registrations in neighbouring markets. Our guide to trademark registration in Brazil outlines the distinct procedural requirements in Latin America's largest market – a useful reference for businesses managing a coordinated Americas IP strategy.
Self-assessment checklist and decision framework
Before initiating a US trademark application, the following checklist helps identify the most appropriate filing strategy and flags issues that require attention at the outset.
- Is the mark already in active commercial use in the United States? If yes, a use-based application is appropriate. If not, file on an intent-to-use basis.
- Does the mark consist solely of descriptive or generic language for the relevant goods or services? If so, refusal on descriptiveness grounds is likely – consider a composite mark or a design element to increase distinctiveness.
- Has a professional clearance search been conducted across the USPTO database, state registers, and common law sources? If not, this step must precede filing.
- Is the applicant entity properly identified and does it correspond to the entity that will commercially exploit the mark? Ownership mismatches must be resolved before filing.
- Are the goods and services identified using USPTO-approved terminology? Descriptions in European or Asian filing language should be rewritten before submission.
Scenario A – Established foreign brand entering the US market. A business with an existing registration in its home jurisdiction should file in the US before launch. Priority runs from the US filing date, not the foreign registration date (unless a Paris Convention priority claim is made within six months of the foreign filing). A Madrid Protocol designation may be efficient for multi-country filings but should be reviewed by a US attorney before submission, since it is subject to the same examination as a direct national application.
Scenario B – US-incorporated startup filing for the first time. Entities structured as a Delaware LLC or other US corporate form should ensure trademark ownership matches the operating entity from the outset. Early-stage businesses frequently file marks in the founder's personal name and later discover that assignment to the company is required before the mark can be enforced. The assignment itself is straightforward, but it creates a gap in the chain of title that sophisticated counterparties – including investors and acquirers – will identify in due diligence.
Scenario C – Brand facing an infringement claim before registration. If an infringement claim is threatened or filed before registration is complete. The registrability of the mark becomes directly relevant to the strength of any defense or counterclaim. In federal court proceedings before a US District Court, registration creates presumptions that can shift the burden of proof in the plaintiff's favour. Unregistered mark holders must establish secondary meaning and geographic scope of use – a higher evidential bar. Seeking registration promptly, even during active dispute, preserves options.
Scenario D – Business seeking to resolve a dispute through arbitration. Trademark disputes in commercial contexts are sometimes subject to arbitration clauses in underlying commercial agreements. Bodies such as JAMS and AAA arbitration (the American Arbitration Association) administer commercial trademark arbitrations in the US. However, registration and cancellation proceedings before the TTAB are not arbitrable – they remain within the exclusive jurisdiction of the USPTO administrative system and, on appeal, the federal courts. Understanding the boundary between arbitrable commercial disputes and non-arbitrable registration matters is essential for drafting dispute resolution clauses in licensing and distribution agreements.
To explore legal options for trademark protection and enforcement in the United States, schedule a consultation at info@ferrazwhitmore.com.
Frequently asked questions
Q: How long does trademark registration in the United States take from filing to approval?
A: The full trademark registration process in the United States typically takes between 12 and 18 months from the date of filing, assuming no significant obstacles arise. If the USPTO examiner issues an office action requiring a response, add a further two to four months. Opposition proceedings, when initiated by a third party, can extend the timeline by an additional six to twelve months.
Q: Can a foreign business or individual apply directly to the USPTO without a US address?
A: Yes, foreign applicants may file a trademark application directly with the USPTO without a US address. However, all applicants domiciled outside the United States must be represented by a licensed US attorney throughout the registration process. Engaging a lawyer experienced in United States intellectual property matters is therefore mandatory, not optional, for international businesses. This rule was introduced to improve application accuracy and reduce the volume of fraudulent foreign filings.
Q: What is the most common reason the USPTO refuses a trademark application?
A: The most frequent grounds for refusal are likelihood of confusion with an already-registered mark and descriptiveness of the proposed mark. A mark that merely describes the goods or services it covers will ordinarily be refused registration on the Principal Register. Applicants can sometimes overcome a descriptiveness refusal by arguing acquired distinctiveness or by seeking registration on the Supplemental Register instead. Working with a law firm in the United States with established USPTO prosecution experience significantly improves the outcome at this stage.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our intellectual property practice covers trademark registration, prosecution, enforcement, and portfolio management in the United States and across major markets in Europe, Asia, and Latin America. The firm combines Portuguese civil law expertise with English common law tradition – a dual perspective that is particularly valuable when managing IP registration strategies that span both use-based and registration-based systems. Our attorneys have advised on trademark matters before the USPTO, the TTAB, and in coordination with proceedings before US District Courts. We work with international entrepreneurs, technology businesses, and in-house legal teams who need coordinated IP protection across multiple legal systems. To discuss your trademark strategy in the United States, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.