The Trademark Mistakes Businesses Make When Entering the US Market

Trademark rights stop at the border. An EU trademark protects you across the member states of the European Union and nowhere else. A UK registration protects you in the UK and nowhere else. Neither one gives you any legal right in the United States.

I have sat across the table from owners who built their brand over twenty years in Europe and assumed that history would count for something here. It counts for very little. If a US company started using a similar name for similar products before you entered this market, its rights will generally beat yours, no matter how long you have used the name back home. There is one real exception: if you file a US application within six months of your European filing, you can claim that earlier European date as your own. Miss that six-month window, and your European history gives you no advantage at all.

US law lets you file an application before you have sold a single product here, based on a genuine intention to sell in the US. This is a real advantage, and most businesses don't use it. They treat the US filing as paperwork to handle once the business is already up and running.

That is backwards. The expensive trademark problems are the ones you discover after you are already committed: after the packaging is printed, the distribution deal is signed, and American customers already know the name. At that point every option costs money, and any negotiation happens from a position of weakness, because the other side knows you can't easily walk away. File as soon as US expansion becomes a real plan, not after the product has already shipped.

The US system is built around real use in commerce, not just registration. At some point you will need to prove, with evidence such as photos of labels or packaging or your product listed for sale, that you actually use the mark on every single item in your application. List things you don't sell in the US, and you create two problems. First, the USPTO periodically audits registrations, and if it finds items you're not using, it will force you to remove them and charge you fees for the process. Second, and much more serious, if you claimed you were using the mark when you knew you weren't, someone can ask to have your entire registration cancelled, not just the unused items.

The safer approach is to only list what you actually sell in the US, or genuinely plan to sell soon, and nothing more.

The Madrid Protocol is a system that lets you extend your home country registration into the United States through a single international filing, instead of filing a separate US application from scratch. It's often convenient and cost-effective. But it shouldn't be the automatic choice, for two reasons.

First, for the first five years, your US rights under Madrid are tied to your home registration. If someone successfully challenges your EU trademark during that period, your US protection falls with it. You can convert to a standalone US filing to save it, but that costs more money and has to happen under time pressure. 

Second, almost every application that designates the US through Madrid comes back with an office action, because the US requires applicants to be represented by a US-licensed attorney, and WIPO's international filing system has no way to provide one. A US application filed directly, with US counsel involved from the outset, is usually the best way to avoid delays and any additional costs.

Getting your US registration approved is not the finish line. The law requires you to prove, on a schedule, that you are still using the mark, or you lose it. Between the fifth and sixth year after registration, you must file paperwork confirming continued use, along with evidence, or the registration is automatically cancelled. It doesn't matter how big your US business has grown by then. Similar filings come due again at every ten-year renewal.

Every one of these mistakes comes from treating the US trademark system like a formality rather than a system with its own logic. Filing early and broad only gets a business so far here. The businesses that enter this market smoothly treat the trademark as part of the expansion plan itself, right alongside the distribution deal and the tax structure. In practice, that means five things:

Handle it in that order, and the trademark becomes one of the easiest parts of a US launch to get right.