Back to (Inter)national trademarks

I'm not thinking to launch my business in the US as of now but maybe in the future. Should I still register the trademark there?

Written by Jan Buza

Co-founder of Trama

It depends on how firm your intention to enter the US market is and how time-sensitive the risk of a third party filing first might be.

The US does require either actual commercial use or a bona fide intent to use. An intent-to-use application is available for brands that have not yet launched in the US market, but it requires evidence of actual US commercial use within a set window after examination; typically within a year of the Notice of Allowance, with extensions possible.

If the US is a realistic future market, filing an intent-to-use application now is the stronger position. If it is a vague possibility rather than a genuine plan, waiting until the business direction is clearer is reasonable.

Related questions

Trademark Registration: DIY vs Professional Service

Filing for trademark registration is something anybody can do with a single online application. Many business owners, however, decide to wait with trademark registration because the process can appear quite complicated at first sight. Applying without a legal representative can be a difficult and time-consuming process. Mistakes and errors are easy to make and can lead to weak trademark protection or the rejection of your trademark registration altogether.

Generic trademarks: the case of Booking.com

By definition, a trademark needs to display sufficient distinctiveness to identify the origin and ownership of the products and services. That means generic and descriptive words should be avoided at all costs. The landmark case in United States PTO v. Booking.com B.V, however, proves that a generic term combined with “.com” or another top-level domain can be registered as a trademark if there is sufficient evidence of consumer recognition.

When should I register my trademark?

Timing is everything, and this is especially true when it comes to trademark registration. Choosing to trademark your brand at the right time is much more important than you would think.