[Global trademark filing guide, part 1] Entering the US: securing trademark rights from A to Z

“We want to enter the US market. How should we prepare our trademark?”

To enter the US successfully, focus first on securing your trademark rights. Registration alone doesn’t protect a trademark there. The US follows a “use-based” principle, so you have to show you’re actually using the mark or intend to use it before your rights are recognized. That makes it essential to understand the basic principles of US trademarks and prepare thoroughly for your company’s situation.

In this post, we explain how to file a US trademark and offer filing tips for different types of business.

[1] How to file a US trademark: the use-based system
[2] US trademark filing cautions by business type
[3] Frequently asked questions about US trademarks

[1] How to file a US trademark: the use-based system

The key to filing a trademark in the US is the use-based system. Under it, trademark rights arise only through actual use of the mark, unlike registration-based systems, where registration alone grants rights. In other words, filing a trademark doesn’t automatically give you rights. They’re recognized only when you’re already using the mark or plan to use it. So it’s important to prepare and submit evidence of use at the right time.

Key preparations for a use-based filing

For a use-based filing, you need to prepare two things strategically:

• Goods and services: State very specifically and clearly which goods or services the mark covers.
• When to submit evidence of use: Be ready to submit evidence of use at the right time, depending on how the mark is being used.

Goods and services

The USPTO requires very specific descriptions of the goods in a filing. For example, if a fashion brand files in Class 25 (clothing), simply listing “clothing” isn’t enough. You need to list the specific items the mark will be used on in detail, such as “T-shirts,” “hats” and “pants.”

When to submit evidence of use

When filing a trademark in the US, you can choose from three filing bases depending on how the mark is being used:

1. In use: The mark is already in use in the US
2. Intent to use: The mark isn’t used in the US yet but will be soon
3. Foreign application/registration: You file in the US within six months based on a mark you’ve already filed or registered elsewhere

In most cases, brands file in Korea first and then consider the US. Many choose basis (3), foreign application/registration. To use this basis, though, the mark and the descriptions of goods must match the Korean filing exactly, so we recommend reviewing it carefully with an expert.

[2] US trademark filing cautions by business type

1. We already sell in the US, and our product lineup is set

> [1] In use

If you already sell products in the US and your product types are clearly defined, you can file based on use. No further evidence is required for five years after registration, so businesses with a set lineup get stable protection.

Caution: Because you must submit evidence of use when filing, you can only file for products you currently sell, which can be somewhat limiting.

2. Nothing is final yet, but we plan to expand our lineup or business soon

> Intent to use

If you plan to expand your lineup, filing on an intent-to-use basis works in your favor. For example, if you plan to launch shoes first and bags later, you can file with both shoes and bags listed. If the bag launch is canceled, you simply remove bags at the registration stage, so you can account for a range of product categories in advance.

Even if your launch is delayed, you can extend the deadline for submitting evidence of use in six-month increments up to four times, giving you up to three years in total.

Caution: You must separately submit evidence of use within one year of filing or within six months of the notice of allowance, which adds extra work.

3. We filed our Korean trademark within the last six months and want to file the same mark in the US

> Foreign application/registration

If you’ve filed or registered a trademark in Korea and want to file the same mark in the US, you can file in the US based on that foreign application or registration. Building on your Korean filing, you can secure US trademark rights relatively quickly.

Caution: The mark must be identical. The mark and the descriptions of goods in your Korean filing must match your US filing exactly. Even if the mark was registered under Korean standards, the US examination may require amendments to the descriptions, so factor this in when preparing.

What if products in the same class are in different situations?

For example, among cosmetics in Class 3, if you’ve already launched a toner in the US but are only planning to launch a perfume, you can use different filing bases for different goods: “in use” for the toner and “intent to use” for the perfume.
>
MarqFolio provides a free strategy tailored to your business throughout the process, from filing to registration. With a network of top-tier law firms in more than 120 countries, we guarantee a high registration success rate of 78%. We also have a 57% repeat customer rate, reflecting proven customer satisfaction.

What should we submit as evidence of use?

You need to submit a statement of use that includes the date you started using the mark and specimens showing use. We recommend gathering evidence of use in advance.

- Goods: Photos of products bearing the mark, software download links, product manuals, website screenshots and the like.
> - Services: Ads, brochures, press releases, business cards, invoices and so on. For restaurants in particular, you can also submit interior and exterior photos, menus and the location as shown on Google Maps, Yelp and similar sites.

Simple invoices or shipping documents aren’t accepted as evidence of use, and catalogs must include ordering information.

[3] Frequently asked questions about US trademarks

Q1. How much does a US trademark filing cost?

As of November 2024, the first class costs $1,250, and you can see a real-time quote in the dashboard (link). In a consultation, we’ll advise you on promotions and additional classes and give you a final quote. MarqFolio guarantees filing costs at least 30% below market rates and, as an industry first, offers a refund guarantee that returns 100% of the service fee if a trademark application is rejected.

Q2. How long does it usually take from filing to registration?

A US trademark generally takes about eight months to a year from filing to registration. It can take longer depending on the examiner’s workload and whether there are oppositions.

Q3. How long does trademark protection last?

In the US, a trademark is protected for 10 years from the date of registration and can be renewed every 10 years after that.

Q4. What happens if we stop using the mark after filing?

If you don’t use the mark, the registration can be canceled. In that case, consider renewal or cancellation procedures before you stop using it.

Q. What’s the process for filing a US trademark through MarqFolio?

After the US, we’ll cover the laws and procedures for the Middle East, Japan, China and other countries in upcoming posts, so stay tuned.

Need more help?

With MarqFolio, MarqVision’s trademark management service, IP experts offer free consultations on a trademark strategy tailored to your company, including strategies for identical marks. Request a consultation and you’ll also get our newsletter with IP insights.