Five Tips for International Trademark Owners Filing a Trademark in the U.S.

By Eric Perrott, Esq.

For international companies filing trademarks in the United States the process may appear simple.  However, as the trademark application process unfolds, various challenges can come up that are difficult to navigate without an in-depth knowledge of US trademark law. 

A significant percentage of foreign companies file trademark applications through their existing non-US trademark attorney and/or by using a “do it yourself” online trademark service.  Many times these applications run into refusals that could have been avoided if a US trademark attorney was engaged to file the application initially.  In fact, if hired to file the initial application, a trademark attorney in the United States can help make the trademark application process go considerably faster, and, many times less expensively than if the attorney is brought in mid-process. 

With the extraordinary amount of information available, international trademark owners should be weary. Simply put – there is a lot of bad information about U.S. trademark law on the internet.

As an attorney, I have had the pleasure working with both companies and individuals from several dozen different countries. As a result, I have talked closely with clients and uncovered several related places where international applicants have misinformation or misconceptions. From those misconceptions, I want to share a few tips for international applications:

Tip 1: The goods and services listed in a US trademark application should be carefully reviewed

In one matter, a client gave me a list ten items and was under the impression that his company could only list ten items for class. This misconception has reared its head in other means as well – typically with international applicants who have worked with a local filing service in the past that gave them bad information about what they can (and should) add to their goods and services.

In the United States, if you are filing a use-based application, you can list as many items as you’d like, as long as you are currently selling those items, and those items are branded with the trademark you are filing. There is no limit – a trademark application for a food company may have dozens and dozens of different products it sells under its brand.

For an “intent to use” application, or any application filed based on a foreign application, you must have a bona fide intent to use each item on the list. A bona fide intent to use means that you have begun business activities, have a business plan, have licensing plans, or otherwise have a real intent that can be shown through evidence. It is not just wishful thinking that one day you may want to offer these products.

List of services from one of Gerben IP’s own registrations.

Tip 2: Beware of using a non-legal “filing service”

A common misconception that I have seen is that so-called “filing services” in other countries can give legal advice to register trademarks, as long as they are not listed as an attorney of record.

Trademark filing services are typically non-legal services that provide (questionable) information to assist you in filing your application yourself. In our opinion, many of these filing services are improperly providing legal advice in the United States and then leaving applicants to “fend for themselves” when it comes to the prosecution of the application. (Trademark prosecution is filing and follow up of an application, in addition to any maintenance for the filings with the USPTO).

Unless you have an attorney of record listed in your trademark application, you are not represented by an attorney before the USPTO and you do so at your own risk. If someone is giving you legal advice and is not an attorney, they are not bound by the ethical and legal rules that attorneys are bound by. They have not been approved to practice law in the U.S. Needless to say you will be proceeding at your own risk and will effectively be on your own if anything goes wrong.

Tip 3: Intent-to-Use applications cost more, but help secure early trademark rights

Recently, a client inquired as to the “six month grace period” for filing proof for an intent-to-use application without needing to pay any additional fee to the government. The client had mentioned that they had been told that by a filing service in another country.

You can file an “intent to use” application to reserve rights in the United States. However, once an intent to use application is filed, there is an additional government fee to file an “amendment to allege use” or “statement of use.” The only way to avoid that fee is to file a “use based” application or to base your application on a foreign registration. However, if you do not have use before your application date for a “use-based application” there is simply no way to avoid the additional fee to amend a 1(b) application to a 1(a) registration.

Tip 4: All goods and services must be “in use in the United States” for a Section 1(a) trademark application

This is a misconception I commonly see, especially with international applicants. Some countries accept long “laundry lists” of goods and services, without an affirmative requirement to have proof of use for each of those items. In addition, the USPTO only requires (for now) a photograph or evidence of one item in each class as proof of use. However, many foreign applicants still apply for a “laundry list” in an attempt to register as many goods and services as possible. Unfortunately, this approach invites opposition and can result in the invalidation of a trademark registration.

As stated earlier, for international applications, for a use-based trademark application, the applicant must have use of every item listed in the application in the United States.

Tip 5: Pay close attention to the entity listed as the trademark owner on your filing

Many companies have differing and varied forms of business entities and protection for businesses. As a result, some international applicants believe that the only (and best) option is to file in their name personally, even though they may own an LLC, corporation, limited company, etc. Ownership issues are notoriously difficult and filing in the wrong owners name can be fatal to a trademark registration.

For example, if the CEO of a corporation filed in his name, personally, but the corporation is actually the entity that controls the trademark, the applicant will not be permitted to change the name from the individual to the corporation. The application (and resulting registration) is void.

While ownership issues are often difficult to unravel, it is important to know the complex answer to the seemingly simple question of “who owns my trademark?”

These types of misconceptions are common and given the complexity of U.S. trademark registration, they are expected! However, despite how common these misconceptions are, it doesn’t change the USPTO’s policies and expectations – unrepresented applicants are held to the same standards as those represented by attorneys with no exceptions. If an international applicant misunderstands the impact or procedure involved in its application, there could be significant delays in the registration of the mark or, worse, the application may never register. Even if it does, some issues will not become problems until much later – after the registration certificate issues and you are trying to build your brand.

We always recommend that international applicants seek the advice of a U.S. attorney and have advocated for requiring this as a prerequisite to filing. However, thousands and thousands of unrepresented foreign applicants file U.S. trademark applications every month and they should each be aware of the potential issues.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: eric@gerbenlawfirm.com. The contents of this blog are for informational purposes only and may not be relied on as legal advice.