7 Key Tips You Must Know to Apply for a Trademark in the U.S.

Seven Key Points You Need to Know About Trademark Applications in the United States

In recent years, with the acceleration of globalization and the rapid growth of cross-border e-commerce, more and more Chinese companies and individuals have started to look toward overseas markets-especially the United States, one of the world's largest consumer markets. When entering the U.S. market, trademark registration has become an essential and indispensable step. According to data from the United States Patent and Trademark Office USPTO, Chinese trademark applications in the first quarter of 2025 increased by more than 15% year-on-year, reflecting the growing emphasis Chinese companies are placing on intellectual property protection.

However, due to differences between the U.S. and China in legal systems, examination processes, and cultural backgrounds, many businesses often encounter confusion or even mistakes during the application process. To help those planning to apply for a U.S. trademark avoid unnecessary detours, here are seven key points to consider.

1. Understand the Use Requirement

Unlike many other countries, the United States follows a first-to-use system, meaning trademark rights primarily come from actual commercial use rather than registration alone. When submitting a trademark application, applicants must prove that the mark has already been used in commerce or that there is a genuine intent to use it. For marks not yet in use, you may file an Intent-to-Use ITU application, but you will still need to submit proof of use before the registration is finalized.

2. Choose the Right Class and Goods/Services Description

The U.S. follows the Nice Classification system, which divides goods and services into 45 classes. Accurately selecting the appropriate class and writing a clear, specific description of the goods or services is crucial. Once registered, trademark protection is strictly limited to the selected class and description. For example, in 2025, a well-known electronics brand had part of its application rejected due to overly broad descriptions, reminding applicants to be precise and avoid vague or general language.

3. Conduct a Thorough Trademark Search

Before officially filing, it is highly recommended to conduct a preliminary search using the USPTO’s online system to ensure your proposed trademark hasn’t already been registered or applied for. While not mandatory, this step can significantly reduce the risk of future conflicts. You may also consider hiring a professional agency to perform a more comprehensive search to identify potentially similar marks.

4. Meet the Registrability Requirements

The U.S. has high standards for trademark registrability, particularly regarding distinctiveness and non-functionality. Generic terms, descriptive words, or product designs lacking distinctiveness are often difficult to register. For instance, in 2025, a food company tried to register a common fruit name as a trademark but was rejected due to lack of uniqueness. When designing a trademark, aim for creative and distinctive elements that can clearly identify your brand.

5. Properly Determine the Applicant and Correspondence Address

Trademark applicants can be individuals, companies, or other legal entities. If the applicant does not have a place of business in the U.S., they must appoint a U.S.-based representative to receive official correspondence. In recent years, some applications have been delayed due to failure to meet this requirement, so it's important to pay attention to this detail.

6. Be Familiar with the Application Process and Timeline

From filing to final registration, the entire process can take anywhere from 8 to 12 months or even longer, depending on the type of application, whether an Office Action is issued, or if there are third-party oppositions. During this time, applicants may receive Office Action letters from the USPTO requiring a timely response and possible modifications. Failure to respond on time may result in the application being considered abandoned.

7. Actively Maintain Your Trademark Rights

Trademark registration is not a one-time task. In the U.S., between the 5th and 6th year after registration, trademark owners must submit a Declaration of Use and apply for renewal. Failure to do so may result in cancellation. Additionally, trademark owners should monitor the market to prevent infringement and take legal action when necessary. In 2025, several well-known brands lost their trademarks due to failure to maintain their registration information, highlighting the importance of ongoing management.

Conclusion

Filing a trademark in the U.S. is a professional process that involves legal, business, and technical considerations. Only by fully understanding the rules, preparing thoroughly in advance, and consistently maintaining the trademark can you truly maximize its brand value and legal protection. For companies aiming to expand into the U.S. market, developing a trademark strategy early on not only enhances brand recognition but also supports long-term business growth.