U.S. Trademark Registrations: What Non-U.S. Companies Need to Know

Expanding your brand into the United States requires more than just a solid market strategy and a thorough understanding of U.S. trademark registrations. Many international businesses are surprised to learn that the U.S. system has unique requirements, including its strict “use in commerce” standard and ongoing maintenance obligations, that differ greatly from those in other countries. The United States trademark registration process is just different. This article highlights the most common challenges foreign applicants face and how to avoid costly mistakes when filing trademarks in the United States.

1. The ‘Use in Commerce’ Requirement For U.S. Trademark Registrations: Not Just a Formality

The United States “use in commerce” requirement differs from most other jurisdictions. While most trademark offices have a use requirement, it is a dormant requirement. In those systems, you can both obtain and maintain your registration without having to prove use of your trademark to that Office. Generally, non-use only comes up in the context of a Non-Use Cancellation proceeding, where a third party initiates a process asking that Trademark Office to cancel a registration because the Registrant is not using it in commerce.

To the contrary, in the United States, the use in commerce requirement is both very active and very stringent. In fact, the United States Patent and Trademark Office (USPTO) mandates that:

• U.S. companies filing applications must prove actual use of the trademark in commerce before registration is granted. This gives non-US companies a huge advantage, which we will address in more detail later in this article.
• Non-U.S. companies can initially bypass this requirement if they file a non-U.S. application first and use a Section 44 filing basis or 66 filing basis through WIPO or the Madrid Protocol. For those filings, their first showing of use will be due the sixth year after registration.
• Use must be continuous and verifiable. The USPTO regularly issues random audits in response to maintenance filings which require substantial evidence of use for a representative sample of the listed goods/services.

Why U.S. Trademark Law Is Different for Non-U.S. Companies

After a trademark is registered with the United States Patent and Trademark Office (USPTO), all registrants must file periodic maintenance documents to keep the registration active. These filings prove continued use in U.S. commerce and ensure the mark still qualifies for protection. Since use in commerce is not required prior to registration for Section 66 and Section 44 International filing bases, many non-U.S. applicants are caught off guard when their first maintenance filing is due 6 years after registration.

The use must be shown at the point of sale, through things like product labels, packaging, website sales pages, or online purchase options. If a Registrant files a maintenance filing claiming a product is in use, they could be penalized.

The three key maintenance filings are:

• Section 8 Declaration of Use (between the 5th and 6th year after registration)
• Section 9 Renewal (every 10 years)
• Section 8 Declaration must also accompany every Section 9 Renewal

Failure to file these on time results in automatic cancellation of the registration.

MAintenance Filings and The audit Program

The Section 8 and 9 Declaration must include:

• A signed statement affirming that the trademark is in current use in U.S. commerce
• A specimen of use for each class, showing the mark as used on or in connection with the goods/services listed
• Payment of the required filing fees

Acceptable specimens vary:

• For goods: A photo of the product, label, packaging, or e-commerce page clearly showing the trademark
• For services: Advertising or promotional materials showing the trademark and describing the services

The Audit Program – What Happens If You’re Selected

The USPTO randomly selects certain Section 8 filings for an audit, especially for registrations covering multiple goods/services per class. If selected:

• The registrant must submit additional evidence of use for two or more items per class
• If they fail to respond adequately, the USPTO may request proof for all goods/services listed
• You must either provide valid evidence or delete unused goods/services from the registration

Why this matters for foreign companies: The USPTO has found that non-U.S. applicants are more likely to over-list goods/services based on their home country’s filing practices. As a result, they face disproportionate scrutiny and are more likely to receive audits.

The Risks of Misrepresentation

Filing a Declaration or responding to an audit under penalty of perjury means:

• Knowingly misrepresenting use can lead to cancellation of your entire registration
• It may be considered fraud on the USPTO, which can result in civil penalties and loss of trademark rights
• Misrepresentation also severely damages credibility and enforceability in infringement actions

If you include goods/services that are not genuinely in use and fail to delete them:

• The USPTO may cancel your registration entirely if you cannot provide adequate evidence during an audit
• If your audit response is incomplete or inaccurate, and you must delete items later, a $250 deletion fee per class applies
• Continued inclusion of unused goods/services, even unintentionally, risks invalidation through third-party cancellation or opposition proceedings

Best Practices for Non-U.S. Applicants

• Narrow your class IDs to items you actually sell or provide in the U.S.
• Be cautious when relying on your foreign trademark registration to define your U.S. coverage, U.S. standards are different
• If you’re not yet using the mark in U.S. commerce on some items, delete them proactively to avoid audit penalties

---

Ignoring this requirement can result in cancellation, loss of rights, and significant costs. It is critical to screen for compliance from the start.

2. Class Identifications: Less Is More in U.S. Applications

The USPTO follows the same international classification system (Nice Agreement) as many other countries, but has its own rules about the content and accuracy of the class identifications (IDs). The key difference is that in the U.S., your trademark must be used on each of the specific goods or services listed. If your company doesn’t actually offer something listed in your application for sale in U.S. commerce (or plan to imminently), it shouldn’t be there.

Non-US applicants often overstate their IDs. For example, hotel chains might list pens, notepads, and chocolates, or any other items branded with their logo but not actually sold. Another example we see often is a company listing what they do internally, which are not services offered directly to consumers. Only products or services that are available for purchase to consumers should be included.

It is best practice to tailor your ID should be tailored to what you actually offer to U.S. customers. Since the USPTO charges filing fees per class, an overbroad ID means you pay more for coverage you cannot support. Worse, when it comes time for maintenance filings, you might be forced to delete unsupported items or face audit penalties.

Maximize Protection with the Right Path

Foreign applicants have two main options when applying for trademark protection in the U.S.:

1. File through the Madrid Protocol via WIPO using a Section 66(a) basis.
2. File a U.S. national application based on a non-U.S. registration (Section 44(e)) or pending application (Section 44(d)).

Both methods allow the applicant to obtain registration without proving use at the outset — a key advantage if you’re still building your U.S. operations.

However, each route has trade-offs:

• The Madrid route locks you into your original class identification, which may not match what you’re planning to offer in the U.S.
• Direct filings may offer more flexibility, but require a valid foreign application or registration.

Regardless of the path, the benefit of deferred proof of use is significant. It gives companies time to launch their products, build consumer recognition, and gather supporting evidence before the first renewal period (between years 5 and 6).

Non-U.S. representatives working with U.S. associates should coordinate closely to ensure accurate class IDs and long-term compliance.

Final Thoughts

Successfully securing and maintaining a U.S. trademark registration requires careful planning, precise class identifications, and ongoing compliance with the USPTO’s strict “use in commerce” requirements. For foreign companies and their representatives, understanding these differences from the start can help you protect your brand, avoid audits, and maintain strong rights in the U.S. market. Whether you are filing through the Madrid Protocol, under a Section 44 basis, or directly in the United States, Stemer Law can help you develop a strategy tailored to your business goals.

Stemer Law (Stemer, P.A.) is a Denver trademark law firm serving clients across the U.S. and abroad. With 1,000+ trademarks filed, we make brand protection simple, affordable, and effective. To speak with a trademark attorney contact us at hello@stemerlaw.com or (303) 928-1094