Brand protection should be high on your priority list when considering US expansion. Registered trade marks are one of the most effective ways to protect your brand, giving you valuable exclusive rights to use the mark in connection with the goods and services covered by your registration. Trade marks are territorial rights, meaning they operate only in the country of registration. To obtain the protection needed in the USA, you must register your branding as US trade marks.
In this article, we consider the benefits of US trade mark registration, discuss key factors to consider when registering a US trade mark and explain the process involved.
If you are reading this because you are planning to expand your business into the US, protecting your brand should be a top priority. Our trade mark solicitors can help you understand the importance of registering your trade marks in the US, explain the key factors to consider, and guide you through the registration process.
Contents:
- What are the benefits of a UK business registering a trade mark in the US?
- Can a UK business apply for trade mark registration in both the UK and the US?
- Why you should conduct a trade mark search before you apply for a US trade mark
- What can you register as a trade mark in the US?
- What classes of goods and services are covered under the US trade mark registration system?
- How to register a trade mark in the United States
- How much does it cost to register a US trade mark?
- How long does a US trade mark last?
- Renewing your US trade mark
- Summary
What are the benefits of a UK business registering a trade mark in the US?
Registering a trade mark in the US has several key benefits, including the following:
Protecting your position in the marketplace
The US is saturated with goods and services, all vying for the American consumer’s attention through the use of memorable names, eye-catching logos and slogans. Developing a strong, recognisable brand can be the difference between success and failure in the US market.
Once you have created an on-point brand, or preferably in the early stages of brand development, you must take steps to protect it. It can be disastrous to spend time and money developing branding that you cannot subsequently use as someone else has got there first. By applying for US trade mark protection before you enter the US market, where the relevant filing basis allows you to do so, you can strengthen your position ahead of launch.
Preventing trade mark squatting
Timely US trade mark protection can prevent so-called ‘trade mark squatters’ from registering trade marks based on your brand and seeking to hold you to ransom by demanding hefty prices to transfer the rights to you. High profile brands are at the greatest risk of falling victim to trade mark squatting, but virtually any business can be affected, and prevention is always better than cure.
Enforcing your rights
A trade mark is one of your business’s most valuable assets. When you register a trade mark in the US, you can rely on your rights to stop third parties from using your mark without permission. With a trade mark, you can avoid confusion in the marketplace, protect your market share and your reputation.
Can a UK business apply for trade mark registration in both the UK and the US?
You can apply for trade mark protection in the UK and the US. In fact, if you trade in both countries, or plan to expand into the US, concurrent trade mark protection is an important step.
Depending on your trade mark filing strategy, you may choose to apply for your desired trade marks in the UK first. If you then file a corresponding US trade mark application within six months of your UK application, you may be able to claim the UK filing date as a priority date. The US trade mark application must meet the relevant requirements, including in relation to the mark and the goods or services covered.
Why you should conduct a trade mark search before you apply for a US trade mark
If your proposed US trade mark is too similar to one already registered and creates a likelihood of confusion, the United States Patent and Trademark Office (USPTO), the body responsible for trade marks in the US, can reject your application. A likelihood of confusion is the most common reason for the USPTO rejecting trade mark applications.
Trade marks don’t need to be identical to create a likelihood of confusion. When comparing the marks themselves, the USPTO considers several factors,including similarity in sound, appearance, meaning, and overall commercial impression. For example, the USPTO uses the marks 'T. Markey' and 'Tee Marquee' to illustrate that marks which sound the same can be confusingly similar even though they look different.
When deciding whether there is a likelihood of confusion between two trade marks, the USPTO will also take into account whether the relevant goods or services are related. Say, for example, you apply for a trade mark for clothing. Your application may succeed even if a similar mark is already registered, provided the earlier registration covers unrelated goods or services - banking services, for instance. Conversely, an earlier mark for bags or clothing retail services could be cited against you even though those goods sit in different classes, because consumers expect them to come from the same businesses as clothing.
To avoid falling foul of the likelihood of confusion rule, you should undertake comprehensive searches of the US trade marks database to identify any potentially problematic existing marks. Trade mark clearance searches are incredibly complex and littered with traps for the inexperienced. Most brand owners seek the help of experienced intellectual property professionals when undertaking them, to ensure nothing major is overlooked. Our trade mark solicitors work closely with a network of trusted US trade mark attorneys. They will advise on the most appropriate attorney to help in your situation and liaise with them on your behalf, making sure the attorney has a thorough grasp of your commercial operations and brand protection goals.
What can you register as a trade mark in the US?
US trade mark protection is available for any sign capable of distinguishing your goods and services, including words, logos, colours and shapes. Examples of well known US trade marks include Google, the Nike Swoosh and the blue used by Tiffany in connection with their jewellery boxes.
There is a notable difference between what can be registered as a trade mark in the UK and the US. One feature of the US system that differs from UK practice is that federal marks may be registered on either the Principal Register or, where the legal requirements are met, the Supplemental Register.
The Principal Register is the main federal register. Marks registered on it may be inherently distinctive, or in some cases may qualify because they have acquired distinctiveness through use. Registration on the Principal Register brings the fullest set of federal registration benefits.
The Supplemental Register can be available for certain marks that are capable of identifying a commercial source but do not yet qualify for the Principal Register, such as some descriptive marks. If a mark later acquires sufficient distinctiveness, the owner may make a new application for registration on the Principal Register.
Brand owners with marks on the Supplemental Register do not have complete trade mark protection, but do enjoy some rights, including using the registered trade mark symbol and preventing third parties from registering confusingly similar trade marks. A registration on the Supplemental Register can still be valuable, but it does not carry all the statutory advantages associated with Principal Register registration. In an infringement dispute, the strength and distinctiveness of the mark may affect the scope of protection available.
What classes of goods and services are covered under the US trade mark registration system?
The US uses the international Nice Classification system, which currently divides goods and services into 45 classes. Classes 1 to 34 cover goods and classes 35 to 45 cover services. When applying for a US trade mark, you must specify the classes in which you require protection. For example, most clothing retailers select class 25 covering clothing and footwear. To achieve optimum brand protection, they may also need registrations in several additional classes, including class 35 covering retail and wholesale services, class 18 covering bags and class 40 relating to custom tailoring.
You must select the correct trade mark classes since they define the scope of protection your mark will provide. Our expert trade mark solicitors, working closely with our carefully selected US trade mark attorneys, can help with this.
How to register a trade mark in the United States
When registering a US trade mark, you have two choices: registering your mark with the USPTO and obtaining a federal trade mark, or registering your trade mark in specific US states.
Registering your trade mark in a specific state generally creates rights and benefits limited to that state, whereas federal registration provides rights and benefits across the United States, subject to the scope of the registration and applicable US trade mark law. Most UK businesses opt for the more comprehensive federal trade mark.
A general overview of the procedure for registering a federal trade mark is as follows.
Decide on the appropriate filing system
The UK and US participate in the Madrid System, which allows eligible trade mark owners to seek protection in more than 130 countries and regional intellectual property offices through a centralised international filing system. The Madrid Protocol offers various benefits, most notably convenience and cost-efficiency when you are registering in several countries at once. It does, however, have limitations, and is not suitable in every situation. Our trade mark solicitors will review your brand protection strategy and advise on whether the Madrid Protocol or a US-specific application is best.
Prepare the application
Our trade mark solicitors have longstanding relationships with many leading US intellectual property law firms, and will ensure your chosen attorney has the right skills and experience for the job.
US trade mark law and practice is particularly strict regarding the classes of goods or services you select, and the depiction of your trade mark, whether that be by way of words, shapes, colours or any other type of representation. Your application must accurately portray your trade mark and carefully describe the goods and services you require protection over. You cannot materially alter your trade mark once you have submitted your application, so it’s important to get it right.
File the application
US trade mark law differs somewhat from the UK when it comes to the filing stage. In the US, you must specify the basis upon which you are permitted to register your mark. This is known as the ‘filing basis’, and there are multiple bases upon which you can rely.
Filing on a use in commerce basis
Filing on a use in commerce basis essentially requires you to prove that you use your mark in commerce. You will generally need to provide dates of first use and an acceptable specimen showing genuine use of the mark in commerce in connection with the relevant goods or services.
Filing on an intent-to-use basis
As its name suggests, filing on an intent-to-use basis indicates that you have yet to start using your mark in the US, but intend to do so soon. You must have a genuine, bona fide intention to use the mark in commerce; an intent-to-use application isn’t simply a way of reserving a mark indefinitely. When you start using your trade mark, you must complete the application process and pay an additional fee to achieve registration. Following the Notice of Allowance, you normally have six months to file a Statement of Use or request an extension. Further six month extensions may be available, subject to the statutory limits and payment of the relevant fees.
Filing on the basis of a foreign trade mark
Relying on a foreign mark is usually the preferred choice for businesses with a UK registered trade mark since you do not need to prove use of your mark in America to obtain a US registration, although you must still declare a bona fide intention to use it there.
Your proposed US mark must be identical to your UK registration, and the goods and services claimed cannot go beyond those the UK registration covers. Once your US mark is registered, it becomes an entirely separate trade mark.
Review
Upon receipt of your application, the USPTO will review it to confirm its compliance with US trade mark law. This process involves the examiner searching for any prior marks that may conflict with yours and carefully checking your written application, including the details of goods and services applied for, and checking any drawings and specimens provided.
If the examiner objects to your application, they will contact you to explain why. If you cannot successfully defend your application, it will be refused.
If the examiner is happy with your application, or if you successfully address any concerns raised, the USPTO will publish your mark in the Trademark Official Gazette. Any third parties who object to your mark may then raise an opposition within 30 days.
Oppositions
A third party can oppose your mark for various reasons. For example, they may allege a likelihood of confusion between their mark and yours, or they may believe that your mark merely describes the goods or services you offer - ‘Cold and Creamy’ for ice cream, for instance.
Opposition proceedings go through several stages, including pleadings, discovery and deposition, and are overseen by the Trademark Trial and Appeal Board (TTAB). If the opposition succeeds, your application will fail. Many opposition disputes are resolved commercially rather than proceeding to a final decision. The TTAB can suspend proceedings in appropriate circumstances while the parties explore settlement, although procedural requirements and deadlines still need to be managed carefully.
Registration
If your application receives no opposition, or if you successfully defend any opposition, your mark will be registered, and you will receive a certificate of registration. For an intent to use an application, further steps will generally be required to establish acceptable use before registration can take place.
How much does it cost to register a US trade mark?
Filing fees for US trade marks are more complicated than in the UK. While you must pay a fee for each relevant class of goods or services in both jurisdictions, the USPTO changed its trade mark fee structure in January 2025, so the previous TEAS Plus and TEAS Standard filing fee options no longer apply to new applications.
For applications filed directly under Sections 1 and 44, the current base application fee is $350 per class, provided the application meets the base filing requirements. Additional per-class fees can apply, including where required information is missing or where an applicant uses a free form description of goods and services instead of entries from the USPTO’s identification manual.
In addition to these initial fees, you will also need to pay your legal team’s costs.
How long does a US trade mark last?
A federal trade mark registration can remain in force indefinitely if the mark continues to satisfy the relevant requirements and the owner files the required maintenance documents and fees.
Renewing your US trade mark
Maintaining a US trade mark is more onerous than maintaining a UK registration. Both jurisdictions require that you renew your mark every ten years, but the US has additional requirements that must be satisfied to retain the mark. For US registrations, a declaration of use or excusable non use must be filed between the fifth and sixth anniversaries of registration. Further maintenance and renewal filings are then required around the tenth anniversary and every 10 years after that.
Missing a mandatory maintenance filing can result in the registration being cancelled or expiring. We will help you with this and ensure your registrations are up to date and current.
Summary
Brand protection in the US is an important step in ensuring success across the pond. Despite the cultural similarities between the two countries, the US and UK trade mark systems are entirely distinct and, in many respects, different from each other. When devising a US brand protection strategy, it is important to work with professionals who not only understand your business, but also have experience in US trade mark law and procedures.
Our trade mark solicitors work closely with an extensive network of US trade mark attorneys to help our UK clients realise their US goals and achieve maximum brand protection for the lowest possible cost.
