5 Steps to Register a U.S. Trademark as a European Union (EU) Based Business

By Josh Gerben, Esq.

A United States trademark registration provides valuable protections to businesses wishing to do business in the U.S.  These are the 5 steps to registering a U.S. trademark as a European Union based business:

1. File your trademark application in the European Union first.
2. Engage an experienced U.S. trademark attorney.
3. Conduct a comprehensive search of your mark.
4. File your application, either directly with the USPTO or through the Madrid Protocol.
5. Maintain your trademark registration.

1. File in the European Union First

If you haven’t yet begun the process to register your trademark in the EU, do this first. Once you’ve submitted your application in the European Union, you should then submit your application to the United States Patent and Trademark Office, or USPTO, within six months.  Doing this will allow you to use the priority date of your EU application in the United States as well.  Anyone looking to register a similar trademark in the U.S. after that date will likely not be approved. To learn how to register a trademark in the EU, click here.

In addition to using your EU priority date, registering first in the European Union has another important benefit.  Typically, the USPTO requires that your trademark be “in use in commerce” within the United States in order to receive approval.  However, trademarks that have been registered in another country are not required to document use immediately.  If your trademark has been registered in the EU, the USPTO will allow the same mark to be registered in the United States on the basis of your foreign registration.

2. Engage a U.S. Based Attorney

The USPTO has recently made significant changes to U.S. trademark law.  As of August 2019, all foreign applicants are required to hire a trademark attorney based in the United States.  Any business or individual that has a principal place of business or permanent legal residence outside the United States is considered ‘foreign’ by the USPTO.  You can still submit a basic application yourself, but you will not be able to respond to any Office Actions issued by the USPTO without a US-based attorney.

While it is required by law, working with a U.S. based trademark attorney is extremely beneficial as well.  Trademark registration is a very detailed legal process, and even if you have experience with the process in the European Union, you will likely benefit from working with an experienced trademark attorney, before, during, and after the registration process.  From conducting a comprehensive trademark search to drafting your application and monitoring your mark’s use, your attorney will work on your behalf as you continue to grow and expand your business outside the European Union. Contact a U.S. trademark attorney today to begin the process of registering.

3. Conduct a Comprehensive Trademark Search

Your trademark application will not be approved by the USPTO if a similar mark is already in use within the United States.  Conduct a comprehensive trademark search prior to filing your U.S. application to determine whether your mark already exists.  We find that many companies from the EU presume that if their trademark is registered in the EU, there will not be a conflict in the United States.  Unfortunately, this is not the case.  It can be frustrating to learn that your mark is being used by someone else in the US, but it’s best to learn this before you’ve submitted your application and paid your fees to the USPTO.

You have most likely seen trademark searches offered online at a reduced cost, but it’s best to have an experienced trademark attorney conduct your search.  Unfortunately, DIY searches usually return only exact matches.  The problem is that most trademark disputes don’t arise from exact word matches, but rather from marks that may cause a likelihood of confusion in the marketplace.  The software available to trademark attorneys, however, is much more comprehensive, revealing both exact matches and confusingly similar matches as well.

4. File Your Application with the USPTO

Once your comprehensive trademark search determines no existing trademarks are being used within the United States, you can move forward with submitting your trademark application.  There are two possible ways for foreign businesses or individuals to file a U.S. trademark application.  The first is to file directly with the USPTO.  This option often requires less back and forth communications between the UPSTO and your attorney, because the U.S. application is much more detailed.

If you plan to file in many countries, you may want to consider the Madrid Protocol.  This international treaty will allow you to file a single application in your home language, which can then be sent to over 90 member countries.  The Madrid Protocol streamlines the process to complete your application, but it may slow the overall process of registration because the broad nature of this application is not specific to the requirements of the USPTO.  Applicants using the Madrid Protocol, therefore, often have to respond to more Office Actions throughout the process.

5. Maintain your Trademark Registration

The protections provided by a U.S. trademark registration are valuable, but only if you enforce them.  Overlooking the unauthorized use of your mark could sway loyal customers from your product or service, and even impact your company’s reputation.  Work with your attorney to monitor the use of your trademark within the United States.  If you find potential infringement, you should take immediate legal action.  A cease-and-desist letter drafted by your trademark attorney can be an effective tool in handling an infringement, but in some situations, your attorney may recommend more formal legal action.

A United States trademark registration will never expire, so long as you continue to use your mark and meet your renewal deadlines.  Be consistent in the use of your mark, being sure to use it only as it appears in your U.S. trademark application.  You will also want to make note of renewal deadlines.  For new trademarks, your first renewal will occur between the fifth and sixth year, and then again between the ninth and tenth year.  After that, renewal applications will need to be filed every ten years.

EU Businesses Registering U.S. Trademarks

If your strategic business plan involves doing business in the United States, whether this year or five years from now, it’s time to consider a U.S. trademark registration.  Once you’ve registered your mark in the European Union, hire a trademark attorney based in the United States.  Your attorney will conduct a comprehensive trademark search to ensure your mark isn’t already in use, then draft your application to the USPTO.  Finally, once you’ve received approval from the USPTO, you must maintain your mark.  Do this by monitoring your trademark’s use and enforcing your rights.  You will also need to meet renewal deadlines issued by the USPTO.  A U.S. trademark registration provides valuable protections for your business, so consider starting the 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.