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121 Alhambra Plaza, Suite 1500 Coral Gables, FL 33134
+1 (305) 489 1901
Our office hour: Mon - Fri
09.00am - 05.00pm
A practical guide for international businesses that want to register a trademark in the United States before expanding into the U.S. market.
Is your company based in Spain, Mexico, Colombia, Argentina, Chile, Peru, or another country and planning to expand into the United States?
Do you already have a trademark application or registration in your home country?
One of the most common questions foreign business owners ask is:
Can I use my existing foreign trademark application or registration to obtain protection in the United States?
The answer is yes, under certain circumstances.
However, trademark rights are territorial. Registering a trademark in one country does not automatically protect it in the United States.
Foreign businesses have several options to register a trademark in the United States through the U.S. Patent and Trademark Office (USPTO).
The appropriate option depends on whether the trademark is already in use, whether the business has an existing foreign application or registration, and its plans for entering the U.S. market.
This option applies when your trademark is already being used in qualifying U.S. commerce.
Use exclusively outside the United States does not, by itself, qualify as U.S. trademark use.
For products, the trademark generally must appear on the goods, packaging, labels, or an appropriate point-of-sale display, and the goods must actually be sold or transported in qualifying commerce.
For services, the mark may appear on websites, advertisements, or promotional materials, but the services must actually be rendered in qualifying commerce.
Applicants generally need:
The USPTO generally requires at least one acceptable specimen per class, although additional evidence may be requested.
This filing option is appropriate for businesses already conducting qualifying commercial activities under their trademarks.
What if your company has not yet started using its trademark in the United States but has genuine plans to do so?
An intent-to-use (ITU) application may be appropriate.
This option allows businesses to begin the trademark registration process before actual U.S. commercial use starts.
However, there is an important requirement:
Proof of actual use in commerce is generally required before the trademark can be registered.
After the application has been examined and approved and the USPTO issues a Notice of Allowance, the applicant must file a Statement of Use within the applicable deadline or request available extensions.
This option can be useful for businesses preparing to launch products or services in the United States.
If your company recently filed a trademark application in another country, it may qualify for international priority.
Generally, applicants have six months from the filing date of an eligible foreign application to file a corresponding U.S. application and claim priority.
For certain legal purposes, the U.S. application may benefit from the earlier foreign filing date.
For example, if you filed a trademark application in Spain on February 1, you would generally have until August 1 to file the corresponding U.S. application and claim priority.
To qualify:
The USPTO does not routinely require a copy of the foreign application merely to claim priority, although additional documentation may be requested.
Important: A foreign priority claim does not automatically result in U.S. registration or independently eliminate the requirement to prove use before registration.
The application must have an appropriate registration basis to proceed to registration.
This option can be particularly useful for businesses that already own a trademark registration in their country of origin.
A qualifying foreign registration may serve as the basis for a U.S. trademark application.
No.
Unlike a foreign priority claim, this filing basis is not subject to the six-month priority deadline.
A recently issued registration or one granted many years ago may potentially qualify, provided it remains valid and meets the applicable requirements.
The U.S. application may cover fewer goods or services than the foreign registration, but it cannot expand beyond its scope.
A qualifying foreign registration may allow a business to obtain U.S. trademark registration without first submitting proof of actual U.S. commercial use.
This can be valuable for foreign businesses planning to enter the U.S. market.
However, the USPTO will still examine the application and may issue refusals, including those based on conflicts with existing trademarks.
Another option is the Madrid Protocol, administered by the World Intellectual Property Organization (WIPO).
The Madrid System allows eligible trademark owners to seek protection in multiple countries through a centralized international filing process.
For example, a qualifying Spanish business may rely on its home-country trademark application or registration to seek international protection designating the United States and other countries.
WIPO processes the international registration and notifies the designated trademark offices.
The USPTO then examines the U.S. designation under U.S. trademark law.
An international registration does not automatically guarantee trademark protection in every designated country.
Centralized filing. Businesses can seek protection in multiple countries without initially filing separate national applications in every jurisdiction.
Reduced administrative requirements. The system simplifies certain international filing and management procedures, generally without requiring notarized or legalized powers of attorney for the international application.
Local attorneys may not be required initially. In many designated countries, applicants do not need to retain separate local counsel at the initial international filing stage. Local representation may become necessary if an objection or refusal is issued.
For U.S. proceedings, applicants domiciled outside the United States must be represented before the USPTO by a U.S.-licensed attorney.
Coordinated international protection. Businesses can manage important aspects of their international trademark portfolios through a centralized system.
No pre-registration proof of U.S. use. A U.S. designation under the Madrid Protocol may proceed to registration without submitting evidence of actual U.S. trademark use before registration.
Dependence on the basic application or registration. For the first five years, the international registration depends on the underlying trademark application or registration.
If the basic application or registration ceases to have effect during the relevant period, the international registration may be canceled to the corresponding extent.
This is commonly known as a central attack.
Examination by each designated country. Each country applies its own trademark laws and may issue refusals.
For example, the USPTO may refuse a U.S. designation because of a likelihood of confusion with an existing trademark, problems with the identification of goods or services, or other legal requirements.
National examination periods. Designated trademark offices generally have 12 or 18 months, depending on the applicable rules, to notify certain provisional refusals. Special rules may apply in particular circumstances.
Not every country participates. Although the Madrid System covers many international markets, it does not include every country in Latin America.
Businesses should confirm whether their target markets participate before selecting an international filing strategy.
Not always.
For a company seeking protection only in the United States, filing directly with the USPTO or relying on a qualifying foreign trademark registration may be more appropriate.
For businesses expanding into the United States and multiple other markets, the Madrid Protocol may offer significant administrative advantages.
The right strategy depends on your target markets, existing trademark rights, and business expansion plans.
Yes, under certain filing options.
Applications based on qualifying foreign registrations and U.S. designations under the Madrid Protocol may proceed to registration without evidence of prior U.S. trademark use.
But there is an important distinction:
Not Having to Prove Use Before Registration Does Not Mean You Never Have to Use the Trademark.
U.S. trademark rights are closely connected to genuine commercial use.
A registered mark that is not used may become vulnerable to cancellation based on abandonment or other applicable grounds.
Trademark owners must also comply with federal registration maintenance requirements.
Generally, a declaration of use and supporting evidence must be filed between the fifth and sixth years after U.S. registration, unless an applicable exception applies. Additional maintenance and renewal requirements follow.
Certain filing routes allow registration before entering the U.S. market, but maintaining trademark rights requires continued attention and a genuine commercial strategy.
The appropriate strategy depends on your circumstances.
Consider the following questions:
Not all filing bases can be combined in every situation, but certain bases may be used together when the applicable requirements are satisfied.
Selecting the appropriate strategy from the beginning can help avoid unnecessary delays and complications.
Applicants domiciled outside the United States are required to be represented before the USPTO by an attorney licensed to practice law in the United States.
Working with an experienced trademark attorney can help foreign businesses evaluate their filing options, prepare their applications, and address issues raised during examination.
The U.S. market offers significant opportunities for businesses from Spain, Latin America, and around the world.
Protecting your trademark should be part of your expansion strategy from the beginning.
Augusto Perera Intellectual Property Law assists foreign businesses with direct USPTO trademark applications, foreign priority claims, applications based on foreign registrations, Madrid Protocol designations, and U.S. trademark prosecution.
Contact us to discuss the appropriate U.S. trademark registration strategy for your business.
Augusto Perera Intellectual Property Law
This article provides general information and does not constitute legal advice. Eligibility for each filing option depends on the applicable requirements and the circumstances of the particular application.
