This article was prepared for our European clients and colleagues. It highlights differences between European and US trademark practice with an emphasis on issues which are more complicated or problematic in the US.

  • Common law rights are strong in the US: This means that a registry clearance search will not guarantee that you will not be sued by a prior unregistered user. Most US companies invest in full common-law searches.
  • Relative examination: The US Trademark Office still cites prior confusingly similar applications and registrations.
  • Basis for a US TM application: US trademark registrations are granted only after use is shown unless the sole basis is a registration from your home country or an international registration. You can file based on intent to use or a foreign application under six months old, but you must show use or a home registration before the registration will issue.
  • Use in the US is required for all maintenance filings: Even if you filed your application in the US based only on a home country registration under the Paris Convention, or an extension of an IR, you still need to show use to maintain the registration between the fifth and sixth anniversary and for all renewals.
  • Infringement: You can base an opposition on a US trademark registration, but if you actually want to sue someone for infringement, you should be able to show use of your mark in the US to establish an actual likelihood of confusion.
  • Madrid Protocol: The docketing for maintenance filings is different from the World Intellectual Property Organization (WIPO) dates. You still have to file a declaration of use before the sixth anniversary of the US registration date, which is the date that the US registration issued, not the date of the central IR registration, and you still must file a separate renewal application and declaration of use (with specimens) based on the US registration date.
  • Identification of goods and services: You need to be a lot more specific in your identification of goods and services than you do at OHIM or in many European countries. And if the application is based on use, you must have use on all the goods and services.
  • Oppositions are more complicated (and expensive): Oppositions and cancellations are a lot more complicated than at OHIM. Full discovery including written questions, documents requests, and depositions are provided for. Know what you are getting into!
  • Geographical indications: The US does not recognise all geographical indications per se. If a geographical product name has become generic in the eyes of the US consumer, then it is not geographically mis-descriptive (e.g. Cheddar cheese).
  • Parallel imports: The US permits parallel imports of authentic goods. You have to find a way to argue that the goods are not authentic, for example, that the labelling is different and may not comply with US law; or that the instructions are in the wrong language.
  • Supplemental Register for non-distinctive marks: If a mark is descriptive but in use, you can file or convert an application to the Supplemental Register (this is not available for an IR). This does not give you a right to sue, but it has some benefits.
  • Certification marks are registrable: Anyone who meets the criteria may use the mark without needing a licence. Collective membership marks are also permitted.
  • Designs: The US does not have a system that is directly comparable to a registered community design.. You have to file either a design patent application or a trademark application claiming trade dress rights in the design.