Trademarks are a company’s most valuable assets. They protect brand names, logos, slogans, and even distinctive product features that make a business recognizable. Without proper trademark protection, competitors can take advantage of a brand’s reputation, leading to lost revenue and customer confusion.
For businesses operating internationally, understanding trademark laws across different regions is essential. While both the United States and the European Union provide strong legal protection for trademarks, their registration systems work differently. The US follows a first-to-use system, granting rights to businesses that actively use a trademark in commerce. The EU follows a first-to-file system, where trademark ownership is granted to whoever registers first, regardless of prior use.
These differences mean that a trademark registered in the US may not necessarily be protected in the EU, and vice versa. If a company is expanding globally, it must understand how trademarks are secured, enforced, and maintained in both regions. This guide explores the key differences between US and EU trademark registration, helping businesses avoid legal pitfalls and protect their brand effectively.
Trademark Registration Systems: First-to-Use vs First-to-File
The biggest difference between the US and EU trademark systems is how they determine ownership. In the US, rights are based on use, while in the EU, rights are based on who files first.
United States: First-to-Use System
In the United States, a business can establish trademark rights simply by using a mark in commerce. This means that even without formal registration, a business that consistently uses a brand name, logo, or slogan may have common law trademark rights in its geographic area.
However, registering a trademark with the United States Patent and Trademark Office (USPTO) provides stronger legal protection. Federal registration grants nationwide rights, makes enforcement easier, and allows businesses to sue infringers in federal court.
To register, an applicant must submit a trademark application with details about the mark and how it is used. If the mark has not yet been used, a business can file an Intent-to-Use (ITU) application, reserving the trademark while they prepare to launch. However, before full registration is granted, the business must prove actual use in commerce by submitting a Statement of Use.
The USPTO examines applications carefully, checking for conflicts with existing trademarks. If the application passes review, it is published in the Official Gazette, allowing others to challenge it. If no opposition is filed, or if disputes are resolved, the trademark is officially registered.
European Union: First-to-File System
Unlike the US, the EU does not grant automatic trademark rights based on use. Instead, rights are granted to whoever files first. This means that even if a business has been using a brand name in Europe for years, it can lose its rights if someone else registers it first.
Trademark registration in the EU is managed by the European Union Intellectual Property Office (EUIPO). Businesses can apply for a European Union Trade Mark (EUTM), which provides protection in all 27 member states with a single application. This streamlined system is useful for companies expanding into multiple European markets.
The EU registration process does not require proof of use. As long as the trademark meets basic legal requirements and no one opposes it, it is granted. However, if a trademark remains unused for five consecutive years, it can be challenged and canceled by another party.
This first-to-file rule makes it crucial for businesses to register their trademarks in the EU as soon as possible. Delaying registration can leave a business vulnerable to trademark squatters, who register brand names with the intent to sell them back to the rightful owner.
Trademark Examination and Opposition
Once a trademark application is filed, it goes through an examination process before approval. The US and EU systems handle this process differently, especially when it comes to opposition.
United States: Strict Examination Process
The USPTO carefully reviews each trademark application to ensure it does not conflict with existing registered trademarks. If the examiner finds a similar mark that could confuse consumers, the application is denied.
Additionally, trademarks cannot be overly generic or descriptive. For example, trying to register a term like “Fresh Apples” for a fruit company would be rejected because it simply describes the product rather than serving as a unique brand identifier.
If an application passes the examination stage, it is published in the Official Gazette for a 30-day opposition period. During this time, other businesses can file objections if they believe the new trademark infringes on their rights. If no opposition is filed, or if challenges are resolved, the trademark is officially registered.
European Union: Easier Registration but Stronger Opposition Process
The EUIPO takes a more relaxed approach to examination. Unlike the USPTO, the EUIPO does not automatically check for conflicts with existing marks. Instead, it focuses only on absolute grounds for refusal, such as ensuring the trademark is not misleading or offensive.
Once the application is accepted, it enters a three-month opposition period, where businesses can challenge it if they believe it infringes on their existing trademarks. Opposition proceedings in the EU can be complex, requiring strong legal arguments and documentation.
Because the EU does not check for conflicting marks, businesses must actively monitor the trademark registry and file oppositions themselves if needed. Failing to do so could allow competitors to register similar or even identical trademarks.
Trademark Use Requirements and Maintenance: Keeping Your Rights Secure
Registering a trademark is only the beginning. To maintain exclusive rights over a trademark, businesses must comply with ongoing legal requirements in both the United States and the European Union. While both regions grant trademarks for ten years with renewal options, their approaches to proof of use, renewal requirements, and risk of cancellation differ significantly.
United States: Proving Use is Mandatory
In the U.S., trademark owners must do more than just register their marks—they must continuously use them in commerce. The U.S. trademark system is designed to prevent businesses from stockpiling trademarks without actually using them. This requirement ensures that only actively used trademarks remain protected, preventing unused marks from blocking other businesses.
After a U.S. trademark is registered, the owner must submit proof of use at specific intervals. Between the 5th and 6th year, trademark holders must file a Declaration of Use (also called a Section 8 filing) with the United States Patent and Trademark Office (USPTO). This filing includes evidence that the trademark is still being used in commerce. If a business fails to submit this proof, the USPTO will cancel the trademark registration.
At the 10-year mark, the trademark owner must file a renewal application along with another Declaration of Use. The trademark must then be renewed every 10 years to remain valid. If the trademark owner stops using the mark or fails to file the necessary paperwork, the trademark is automatically canceled, and anyone else can apply for it.
This strict approach forces businesses to actively use and monitor their trademarks. If a company fails to prove use, its rights disappear—even if the brand was well-known.
European Union: No Proof of Use Required for Renewal, But Use is Still Important
Unlike in the U.S., the European Union Intellectual Property Office (EUIPO) does not require businesses to prove trademark use at the time of registration or renewal. Once registered, a European Union Trade Mark (EUTM) remains valid for ten years, and renewal only requires paying a fee. This means a trademark owner can maintain protection indefinitely without submitting evidence of actual use.
However, there is a catch—if a trademark remains unused for five consecutive years, it becomes vulnerable to cancellation due to non-use. Unlike the U.S., where the trademark office actively requires proof of use, the EU system relies on third parties to challenge unused trademarks. If a competitor or another party can prove that a trademark has been inactive for five years, they can file a cancellation request and potentially take over the mark.
For businesses, this means that even though proof of use is not required for renewal, they must actively use their trademarks in the EU to prevent others from challenging and canceling them.
Key Takeaways on Maintenance and Renewal
The U.S. trademark system imposes stricter maintenance requirements compared to the European Union, ensuring that only actively used trademarks remain protected. Trademark owners in the U.S. must provide periodic proof of use to keep their registration valid. This includes submitting a Declaration of Use between the fifth and sixth year after registration and renewing the trademark every ten years with additional proof of continued use. If a business fails to meet these deadlines or cannot demonstrate that the mark is being used in commerce, the trademark will be canceled, and the rights lost.
In contrast, the EU system is more flexible when it comes to renewal. Once registered, a European Union trademark (EUTM) remains valid for ten years without requiring proof of use at the time of renewal. However, this flexibility comes with a risk—if a trademark remains unused for five consecutive years, third parties can challenge and cancel it on grounds of non-use. This means that while businesses don’t have to actively prove use during the renewal process, they must still ensure their trademark is being used regularly to avoid potential cancellation.
For businesses operating in both regions, a balanced strategy is necessary. In the U.S., they must keep track of proof-of-use deadlines and ensure their marks remain in commercial use to prevent cancellation. In the EU, trademarks should be actively used within the five-year window to avoid losing rights due to non-use challenges. Additionally, businesses should monitor their trademarks in both jurisdictions, watching for opposition filings or cancellation attempts and responding quickly to protect their brand.
Failing to comply with maintenance requirements can result in losing a valuable trademark, potentially forcing a business to rebrand or engage in expensive legal battles to reclaim lost rights. A proactive trademark strategy—maintaining active use, meeting regulatory deadlines, and monitoring filings—ensures long-term brand protection and minimizes legal risks in both markets.
Choosing the Right Strategy for Trademark Protection
Expanding into the U.S. and EU requires a tailored trademark strategy, as their legal systems differ significantly. A one-size-fits-all approach can lead to lost rights or costly legal battles. The key to success lies in understanding how trademarks are secured and enforced in each region.
In the U.S., trademark rights are based on actual use, meaning businesses must prove that their marks are in commercial use before full registration is granted. Companies should carefully time their applications, ensuring they are ready to launch their brand and demonstrate sales, advertising, or marketing activity. Filing an Intent-to-Use application allows businesses to reserve a trademark while preparing for active use, but proof of use must be provided within the required timeframe.
In contrast, the EU operates under a first-to-file system, making early registration crucial. Businesses should secure their trademarks before entering the market to prevent competitors or bad-faith registrants from claiming them first. While proof of use is not required at registration, trademarks that remain unused for five years can be challenged and revoked.
For businesses operating in both regions, combining these strategies is the best approach. Early registration in the EU prevents unauthorized claims, while ensuring active use in the U.S. maintains legal protection. Beyond registration, businesses must monitor trademark filings, enforce their rights against infringers, and consider language and cultural differences when expanding internationally. A proactive, well-planned trademark strategy protects a brand’s reputation and ensures long-term security in the global marketplace.
Final Thoughts: Protecting Your Brand Internationally
Trademarks form the foundation of a strong brand, giving businesses the legal right to distinguish their products and services while preventing competitors from exploiting their reputation. As companies expand globally, understanding the differences in trademark laws across jurisdictions becomes critical. The legal landscape for trademark protection varies from country to country, and failing to recognize these distinctions can lead to costly disputes, loss of rights, or forced rebranding.
Many businesses mistakenly believe that registering a trademark in one country provides global protection. In reality, trademark rights are territorial, meaning that a registration in the United States does not automatically extend to the European Union or any other market. The U.S. and EU operate under distinct legal frameworks—one prioritizing use-based rights and the other following a first-to-file system—and businesses must tailor their trademark strategy accordingly. A proactive approach ensures that brands are safeguarded from infringement, unauthorized use, and legal complications that could jeopardize their market position.
Why a Global Trademark Strategy Matters
Expanding into international markets requires a strategic plan for securing trademarks, as each jurisdiction applies different standards for registration, enforcement, and maintenance. The European Union follows a first-to-file system, meaning that whoever registers a trademark first owns the rights, regardless of whether they have used the mark in commerce. Businesses planning to enter the EU should register their trademarks early to prevent competitors or opportunistic third parties from securing the rights before them. Delaying registration can result in legal battles, forcing a company to either purchase back its brand name or lose access to key markets.
The United States, however, operates under a first-to-use system, granting trademark rights to businesses that actively use their marks in commerce. Simply filing an application is not enough to secure long-term protection. Companies must demonstrate genuine commercial use before the U.S. Patent and Trademark Office (USPTO) grants full registration. This approach ensures that trademarks are not held indefinitely by entities that do not intend to use them, but it also places a greater burden on businesses to prove ongoing use.
A robust international trademark strategy involves balancing these requirements. Companies must register their trademarks early in first-to-file jurisdictions like the EU while ensuring that they establish and maintain use in markets like the U.S. Monitoring trademark filings across key markets is equally important, as it helps businesses detect and oppose infringing applications before they become a threat. Without active monitoring, companies risk losing exclusive rights to their brand names and designs, particularly in jurisdictions that do not automatically check for conflicting marks.
The Cost of Ignoring Trademark Protection
Failing to secure trademarks in international markets can have severe financial and reputational consequences. Many companies have faced legal challenges due to trademark squatters, who register well-known brand names in bad faith, hoping to sell them back to the rightful owner. Others have been forced into expensive legal disputes after discovering that a competitor had legally claimed their brand in a foreign jurisdiction. Businesses that fail to meet proof-of-use requirements may also find their trademarks canceled, leaving them vulnerable to infringement.
Ignoring trademark protection can lead to a forced rebranding, which disrupts brand consistency and diminishes customer trust. Rebranding involves not only changing company materials, packaging, and marketing efforts but also rebuilding recognition in a crowded marketplace. These challenges highlight why businesses must take trademark protection seriously from the outset.
The Bottom Line
Securing trademark protection in the U.S. and EU requires different strategies, but both systems offer strong legal safeguards for businesses that follow the proper procedures. Companies must take action early, maintain active use, and enforce their rights to ensure their brand remains protected across international markets.
A well-planned trademark strategy does more than prevent legal disputes—it provides businesses with a competitive advantage, ensuring that they maintain exclusive rights to their brand identity. By anticipating potential legal challenges and securing trademarks in key markets, companies can expand confidently, maintain their brand integrity, and establish long-term success in a global marketplace.4o
