3 Mistakes to Avoid When Registering a US Trade Mark from Australia

Emily Young

• 24 August 2021
• 24 August 2021
• 5 min read

As the world’s largest economy and Australia’s third-largest two-way trading partner, the United States (US) is an excellent place for Australians to do business. The huge market in the US makes expanding your business to the US a great opportunity, so it is important that you adequately protect your brand before doing so. Before you register a trade mark in the US from Australia, you must ensure you have a solid understanding of the process. This article will take you through three major mistakes to avoid when registering a US trade mark from Australia.

1. Not Knowing Where to Apply

Before applying to register a US trade mark from Australia, you should consider the different options available for applying. This includes applying directly to the United States Patent and Trade Mark Office (USPTO) or applying through the Madrid Protocol. The Madrid Protocol is a method designed to allow for trade mark registration in as many participating countries as you want with just one trade mark application.

There are different advantages of applying through each of these systems. For example, you can use your already-existing Australian trade mark to apply through the Madrid Protocol, simplifying the process. However, the US requirements for trade mark registration require more detail than the Australian system, which might make your Australian application too broad for use.

On the other hand, trade mark applications made directly with the USPTO require proof of use before registration (unless you base the US application on a foreign application, like Australia). Without proof, the USPTO will consider your application abandoned. Further, direct applications often require the assistance of US-based attorneys, which can make the application more expensive.

You should consider your business’ best trade mark registration option given the different application and registration methods.

2. Not Conducting a Thorough Trade Mark Search

When applying to register a US trade mark from Australia, you must conduct a thorough trade mark search. This can help you ensure you are not infringing on someone else’s trade mark. The USPTO has a trade mark search tool called the Trademark Electronic Search System (TESS) to search for trade marks. This free search tool has several search options, including searching by design marks, words, or a combined search.

As the US is a party to the Madrid Protocol, you can also search for US trade marks through this system. The Madrid system has its own trade mark search tool called the World Intellectual Property Organisation’s Global Brands Database, which you can use when conducting a US trade mark search. The Global Brands Database allows you to search for identical or similar words based on the class of goods and services. You can also filter by:

• source;
• image;
• type;
• trade mark status;
• country of origin; and
• year of the application.

3. Not Clearly Identifying Your Trade Mark

If you file your trade mark in the US, you must provide very specific descriptions of your trade mark. Compared to Australia, the trade mark application process is very narrow. If you apply for US trade mark registration through the Madrid Protocol using your previously registered Australian trade mark, it will likely be considered too broad by the UPSTO standards. You should seek the help of an IP professional to file your US trade mark application properly. 

The other significant difference between trade mark registration in the US and Australia is the ‘nomination system’. When applying for a trade mark in the US, you must specify whether your trade mark is already in use or is intended for use. If it is already in use in the US, you will need to nominate ‘use in commerce’. If you have not begun using your trade mark in the US, you will need to nominate ‘intent to use’. It is important to note that this is more than just the thought of using your trade mark – instead, you will have to provide additional forms and pay additional fees to show that your trade mark is market-ready. 

Key Takeaways

Before your register a US trade mark from Australia, it is important that you consider:

• your registration options;
• the availability of your trade mark in the US; and
• the details of your trade mark.

For help navigating the US trade mark system, get in touch with our experienced trade mark lawyers. You can contact them on 1300 657 423 or by filling out the form on this page.

Frequently Asked Questions