06 January 2025
The United States stands out as one of the few countries requiring trade mark owners to periodically demonstrate that their trade marks are actively used in commerce. This applies to all goods and services covered by the trade mark. If a business fails to provide this proof, it risks losing its trade mark registration. This strict policy aims to keep the U.S. Federal Trademark Register accurate by preventing inactive trade marks or opportunistic filings.
Why Does This Matter?
The U.S. trade mark system is well-known for its demanding requirements, which can pose challenges for businesses. Filing overly broad trade mark applications can lead to serious consequences, including allegations of fraud. On top of this, the U.S. Patent and Trademark Office (USPTO) carries out routine audits of trade mark filings, which can add to the costs of maintaining your registration.
Since 2017, these audits have been conducted at random, affecting businesses globally, including many in Australia and New Zealand. However, there’s some good news: the USPTO has announced changes to its process. The audits will now focus on specific registrations where there’s reason to doubt whether the trade mark is being actively used for all the listed goods and services.
Steps for Australian and New Zealand Businesses Entering the U.S. Market
For businesses planning to expand into the U.S., it’s essential to have a solid trade mark strategy. Here’s how you can stay ahead:
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Delay Proof of Use Deadlines: We can help you extend the timeline for meeting the proof of use requirements, giving you more flexibility as you establish your brand in the U.S. market.
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Strategic Application Planning: Filing a well-thought-out trade mark application that accurately reflects your business activities can help avoid unnecessary complications.
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Manage Costs Effectively: Proper preparation can help you steer clear of unexpected expenses tied to audits or compliance issues.
By partnering with an experienced trade mark attorney, you can develop a clear strategy to protect your rights and avoid potential risks. If you’re looking to secure your trade mark in the U.S., reach out to our team to explore your options!
