5 Steps for Australian Businesses Registering a U.S. Trademark

By Josh Gerben, Esq.

The 5 steps needed to register a United States trademark as an Australian based business:

1. File your trademark in Australia.
2. Engage a US trademark attorney.
3. Conduct a US trademark search.
4. File your trademark with the USPTO.
5. Properly maintain your US registration.

File Your Trademark in Australia First

If you haven’t already done so, begin the process to register your trademark in Australia first, before filing in the United States.  You do not need to wait until your application has been approved in Australia, however, before filing in the U.S.  Once your application has been submitted to IP Australia, submit your application to the United States Patent and Trademark Office, or USPTO, within six months.  This will allow you to use the priority date of your Australian application in the United States as well.

Another benefit of registering first in Australia is being able to obtain your US registration before you have an actual “use in commerce” in the US.  In the United States, a trademark must be “in use in commerce” within the United States to be registered, unless the same mark has been registered in another country.  If your trademark has been registered in Australia, the USPTO will allow your registration to be issued in the United States (for the same mark) on grounds that you have the foreign registration.

Engage a US Trademark Attorney

The United States Patent and Trademark Office, or USPTO, has made significant changes to U.S. trademark law recently.  As of August 2019, all foreign trademark applicants will be required to hire a U.S. based trademark attorney.  A business or individual is considered ‘foreign’ if the applicant has a permanent legal residence or principal place of business outside the United States.  While you can still submit a basic application yourself, you won’t be able to respond to any Office Actions issued by the USPTO without an attorney.

In addition to being required by law, working with a U.S. based trademark attorney is also extremely beneficial.  Even if you have experience with the process in Australia, trademark registration is a very detailed legal process.  Your attorney will conduct a thorough trademark search and provide guidance if changes to your mark should be made.  Your application will be drafted correctly, and most trademark attorneys will reply to non-substantive Office Actions on your behalf, which will save you valuable time and energy as you work to expand your business outside Australia.

Conduct a US Trademark Search

The USPTO will not approve a trademark if a similar mark is already in use.  Conduct a comprehensive trademark search before you register your mark in the United States to be sure that no one else is using a confusingly similar mark.  If you find a similar mark in use, you can work with your attorney to make the necessary changes to your own mark before filing.  It can be upsetting to learn that your mark exists, but it’s best to learn that information before you’ve submitted your application and paid your fees to the USPTO.

You can find trademark searches offered online and through legal sites, but it’s best to work with an experienced trademark attorney when conducting a trademark search.  Do-it-yourself searches will typically only return results on exact matches.  Most trademark disputes, though, don’t arise from exact word matches, but from any marks that could cause a likelihood of confusion in the marketplace.  Unlike these basic searches, the software available to trademark attorneys is much more comprehensive, revealing not only exact matches but similar matches to your mark as well.

File Your Trademark with the USPTO

Like Australia, the United States is a “first to use” country, which means that some trademark protections are available simply by using your mark in the marketplace.  Unfortunately, these basic trademark protections are extremely limited and challenging to enforce.  In order to have the presumption of nationwide validity and a strong legal argument in infringement cases, it is best to register your mark with the USPTO.

International registrants have two options for filing an application in the United States.  The first is to file directly with the USPTO through your U.S. based attorney.  This direct application process is typically the best route if you plan to register your trademark in only a handful of other countries.  The second option is to apply through the Madrid Protocol, an international treaty allowing businesses and individuals to complete a single application, which can then be applied to over 90 member countries.  The Madrid Protocol might be the best choice if you plan to register in many countries at one time.  Either way, you will need to hire a U.S. based attorney to assist you in communicated with the USPTO directly.

Properly Maintain Your US Trademark Registration

Your trademark protections are only valuable if you enforce them.  Allowing others to use your mark without permission could greatly impact your company’s reputation and sway loyal customers from your product or service.  Work with your attorney to monitor your trademark’s use, and if a potential infringement is found, take immediate legal action.  Often, a cease-and-desist letter drafted by your attorney is enough to put the infringer on notice, but occasionally, more formal legal action will be required.

As long as you continue to use your mark and meet renewal deadlines, your trademark protections will never expire!  Be sure to be consistent in the use of your trademark, using it only as it appears in your trademark application.  Also, make note of renewal deadlines and begin the process to renew your mark well before the deadlines approach.  For new trademarks, the first renewal deadline will occur between the fifth and sixth year, and then again between the ninth and tenth year.  After that, renewal deadlines will occur every ten years.

Registering a U.S. Trademark as an Australian Business

A United States trademark can be a valuable asset to your business as you expand outside Australia.  Once you’ve submitted your application with IP Australia, you can begin the process to register your trademark in the U.S.  Work with an experienced, U.S. based attorney to conduct a comprehensive trademark search and submit your application, either directly through the USPTO, or through the Madrid Protocol.  Once your mark is registered in the United States, it’s important to monitor its use and take legal action against infringers.  If your mark is used consistently and renewed by set deadlines, you’ll have trademark protections that never expire!  Contact a United States trademark attorney to start the registration process today.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.