Use creates rights; registration makes them usable
Unlike China, where trademark rights belong to the first party to register, the United States recognizes rights in a mark from its use in commerce. A company that has sold under a name in the United States has some protection in the area where it sold, even without a registration. But unregistered rights are local, hard to prove and nearly useless against online counterfeits. A qualifying federal registration may provide nationwide priority tied to the application filing date, subject to applicable conditions, a legal presumption of ownership and validity, access to federal court remedies, the ability to record the mark with Customs and Border Protection, and the registration—or, under some programs, pending application—that marketplaces such as Amazon require for brand protection. For a company entering the market, the practical rule is to file before the first sale, and ideally before the first public announcement.
Clear the mark properly
A clearance search is more than a check of the USPTO register for the identical word. Applications are refused, and oppositions filed, on the basis of a likelihood of confusion with similar marks for related goods—similar in sound, appearance or meaning, including English translations of a Chinese mark and pinyin spellings. Unregistered common-law uses can also block a launch. A proper search covers the federal register, state registrations, business names, domain names and marketplace listings, and it is read by someone who can judge how an examiner would view the results. Marks that describe the goods ("Premium Battery") or are primarily surnames face refusals of their own. Finding this out before filing costs a fraction of discovering it after the packaging is printed.
Choose the filing basis and file early
A U.S. application can be filed before use on a bona fide intent-to-use basis, which can establish an earlier filing date and potential priority if the legal conditions are met. Registration generally requires timely proof of use in commerce. A company that already holds a registration in China or elsewhere can file on the basis of that foreign registration, or extend an international registration under the Madrid system to the United States, and in either case need not prove U.S. use before registration—though it must use the mark in the United States to keep the registration alive. Goods and services are specified by class and must describe what the company actually sells, in language the USPTO will accept. Since 2019, applicants domiciled outside the United States must be represented by an attorney licensed in the United States, and the USPTO requires an accurate domicile address.
Put ownership in the right entity
The trademark should be owned by the entity that controls the quality of the goods—usually the parent company or the operating subsidiary—and licensed to others under written terms. A mark registered in the name of a founder, a distributor, a marketing agency or a U.S. partner belongs to that person or company, and recovering it later requires cancellation proceedings or negotiation. Distribution and agency agreements should state expressly that the distributor acquires no rights in the brand, may not register it anywhere, and must assign any registration it obtains. Where a mark is already in the wrong hands, the sooner the company acts, the more options it has, because defenses such as acquiescence strengthen with time.
Use the registration
Registration is an important starting point, but monitoring and enforcement still matter. Enroll in marketplace brand programs, which allow faster takedowns of counterfeit and infringing listings. Record the registration with Customs and Border Protection so that counterfeits can be detained at the border. Monitor new USPTO filings for confusingly similar marks and oppose them within the window. Send demand letters where infringement is clear, and be prepared to follow through, because a pattern of unanswered letters weakens the brand's position. Enforcement can be scaled to the budget, but it should be consistent.
Maintain it
A U.S. registration is maintained by sworn declarations of continued use filed between the fifth and sixth year after registration and at each ten-year renewal, with specimens showing the mark in use for the goods listed. The USPTO audits a percentage of these filings and removes goods for which use cannot be shown, so the goods listed should match what is actually sold. Use the mark in the form registered; a redesigned logo may need a new application. Keep dated evidence of use—invoices, packaging, listings—as a matter of routine. And calendar the deadlines in a system that survives staff turnover, because missed deadlines can lead to cancellation and loss of important registration rights.
References
How Lumen Law & Co. can help
U.S. trademark planning should account for actual use, ownership, filing strategy, and commercial relationships.
- Assist with trademark searches, risk assessment, applicant selection, and filing strategy.
- Review trademark ownership, licensing, and distribution-related contract provisions.
- Assess evidence and response options for opposition, infringement, or marketplace disputes.