Entering the U.S. Market — Avoiding Pitfalls in U.S. Trademark Applications

If you are preparing to enter the U.S. market — whether selling goods or providing services — it is advisable to consider U.S. trademark protection as early as possible.

For cross-border e-commerce sellers, your products may be sold through online channels such as Amazon, Shopify, TikTok, or your own independent website. For technology and service companies, your business may involve AI tools, mobile apps, SaaS platforms, online education, or content channels. Regardless of the business model, a distinctive and recognizable brand name is an important asset for entering the U.S. market and building consumer recognition.

Once a trademark is registered with the United States Patent and Trademark Office (USPTO), the trademark owner can obtain nationwide federal trademark protection, provided the requirements of federal trademark law are met. Compared with the common-law rights that arise solely from unregistered use, a federal registration generally provides stronger and clearer legal protection for a brand, and is also helpful in platform takedown complaints, enforcement actions, and business negotiations to prove ownership of the mark.

However, the U.S. trademark system differs from the Chinese trademark system in many respects. Without a basic understanding of the rules governing U.S. trademark applications, applicants who try to DIY their own application can easily run into problems involving the filing basis, evidence of use, trademark searches, or post-registration maintenance.

Below is a summary of several issues that deserve particular attention when applying for a U.S. trademark.

1. Foreign Applicants Must Apply Through a U.S.-Licensed Attorney

If the applicant is an individual or company resided outside the United States, current USPTO rules require that the U.S. trademark application be filed through a U.S.-licensed attorney.

In other words, if you are a Chinese company, or if you are not an individual applicant located within the United States, you cannot simply log into the system and file a U.S. trademark application yourself, the way you might have in China. This requirement is especially important for Chinese cross-border e-commerce businesses.

A U.S. trademark application is not simply a matter of “filling out a form and paying the filing fee.” Matters such as the description of goods/services, the filing basis, evidence of use, distinctiveness of the mark, and potential prior rights can all directly affect the outcome of examination.

For this reason, engaging an attorney who is familiar with the U.S. trademark system to conduct a basic search and risk assessment before filing is generally far more efficient than trying to fix problems after an application has already been refused.

2. Not Every Name Is Suitable as a Trademark

One of the core requirements of U.S. trademark protection is that a mark must possess sufficient distinctiveness. In simple terms, the function of a trademark is to allow consumers, upon seeing a name, logo, or symbol, to associate the related goods or services with a specific company.

If a name merely describes the characteristics, function, ingredients, or use of the goods or services, or is a generic term within the industry, it may be difficult to obtain strong trademark protection due to a lack of distinctiveness.

For this reason, when choosing a brand name, coined terms, suggestive marks, and arbitrary marks that have no direct connection to the goods themselves generally provide a stronger basis for distinctiveness.

For example:

•        NIKE is not itself a generic term for athletic shoes;

•        COCA-COLA is likewise a highly original and distinctive brand name;

•        JAGUAR, used for an automobile brand, is not a descriptive term for the automobile itself, while also evoking associations of speed and power in consumers’ minds;

•        APPLE, if used to sell fruit, would lack sufficient distinctiveness as a mark for “apples” themselves; but when used in the electronics field, it forms a brand identity with no direct connection to the goods.

Brand naming is therefore, in effect, the first step in trademark protection. A good name

should not only be “catchy, memorable, and marketable,” but should also take into account whether it can be registered, whether prior rights exist, and whether it is likely to create a risk of infringement in the future.

3. U.S. Trademark Applications Have Different Filing Bases

One very important issue in U.S. trademark applications — and one that is easy to get wrong — is the filing basis. Common filing bases include:

(1) Section 1(a): Actual Use in Commerce in the United States

If the brand has already been put into actual commercial use in the United States, an application may be filed based on Section 1(a).

In this case, the applicant is generally required to submit corresponding evidence of use (a specimen) demonstrating that the mark is actually used in connection with the goods or services covered by the application.

For example, for goods, this requires actual product packaging, product web pages, labels, or other materials showing the connection between the mark and the goods; for services, it requires website pages, advertising materials, or other materials demonstrating the connection between the mark and the relevant services.

Simply because a product “can be sold into the United States” does not mean that the requirement of “use” under U.S. trademark law has been satisfied.

“Use” in a U.S. trademark application must meet the applicable legal standard and must be based on a genuine fact of commercial use.

(2) Section 1(b): Intent-to-Use

If your brand has not yet actually been used in the United States, but there is a definite business plan to use it in the United States in the future, an application may be considered under Section 1(b) (Intent-to-Use).

One important advantage of this basis is that evidence of use does not need to be submitted at the time of filing. Accordingly, for a company that has already settled on a brand name but whose product has not yet formally entered the U.S. market, an intent-to-use application can help secure an earlier filing date.

However, this does not mean that, once the application is approved, the applicant can simply continue not using the mark indefinitely. After receiving a Notice of Allowance, the applicant must still submit proof of actual use within the prescribed deadline in order to ultimately complete registration. Intent-to-use is therefore not a mechanism allowing “registration without use,” but rather a system that allows a company to file early and supplement proof of use afterward.

(3) Section 44(e): Based on a Foreign Registration

If the applicant already holds a corresponding trademark registration in another country, and the requirements of U.S. trademark law are met, an application may also be considered under Section 44(e). In this case, evidence of use in the United States is generally not required in order to obtain registration.

However, there is a very important limitation here: the mark and the scope of goods/services in the U.S. application must correspond to the rights underlying the foreign registration. In other words, it is not the case that “having a registration in China” allows an applicant to freely expand the scope of goods in the U.S. application as they wish. In addition, even where U.S. registration is obtained based on a foreign registration, the registrant must still comply with U.S. trademark maintenance requirements and submit proof of use or corresponding declarations at the prescribed times.

4. Evidence of Use Must Be Genuine

Please pay special attention to this point in the U.S. trademark applications: do not “manufacture” evidence of use merely for purposes of filing.

For example:

•        Digitally editing photos to create fake product packaging;

•        Creating a website that is not actually in operation;

•        Creating fake product sales pages;

•        Making a single sample product while claiming that commercial sales have already occurred;

•        Submitting web pages or images that do not correspond to actual commercial use.

Such practices can lead to serious legal consequences. U.S. trademark registration emphasizes genuine use of the mark in commerce. Neither an attorney nor an applicant may create superficial “evidence of use” merely to satisfy the filing requirements.

As the USPTO continues to strengthen its scrutiny of the authenticity of trademark applications, fraudulent applications or fraudulent evidence of use can result in consequences far beyond the refusal of a single application. If the USPTO determines that fraud or false statements occurred during the application process, an already-obtained registration may also be affected, and could even be cancelled.

5. Trademark Clearance Searches Should Not Be Limited to the USPTO Database

Many applicants, before filing a U.S. trademark application, only search the USPTO database to see whether an identical mark already exists. This is far from sufficient.

U.S. trademark rights are not based solely on a single “first-to-register” rule. In the United States, even a mark that has not been federally registered may give rise to a certain scope of common law trademark rights if someone has already made actual use of that mark in the United States. In addition, individual U.S. states also maintain their own trademark registration systems.

For this reason, when conducting a trademark clearance search, in addition to searching USPTO federal trademark records, the following should also be considered depending on the circumstances:

•        USPTO federal registration and application records;

•        State-level trademark registrations;

•        Relevant business entity names and commercial records;

•        Actual use on e-commerce platforms;

•        Company websites;

•        Social media;

•        Industry websites and other publicly available business information;

•        Other materials that may evidence prior commercial use.

Particularly for a company that is already prepared to invest significant resources in brand building, the real question that needs to be answered is not “Is there an identical mark?” but rather: “Is there a prior-used or prior-registered mark whose goods/services are sufficiently related to my business that it could pose a risk to my use, registration, or future expansion?”

This is also the key difference between a professional trademark clearance search and a simple “duplicate check.”

6. A Successful Registration Does Not Mean the Work Is Done

Trademark registration is not a “one-time, permanently valid” matter. After a U.S. trademark is registered, the owner must continue to pay attention to the actual use and maintenance of the mark. For example, for a mark registered based on actual use, corresponding declarations of use and evidence of use must be submitted during specific maintenance windows following registration.

Generally, between the 5th and 6th year after registration, a Section 8 declaration of use must be filed; a mark that meets the requirements may also file a Section 15 declaration of incontestability at the same time. Thereafter, between the 9th and 10th anniversary of registration, a corresponding renewal and declaration of use must be filed. Maintenance continues thereafter on the prescribed periodic schedule.

If a mark has stopped being used but the registration is nevertheless maintained, or if a declaration of use is filed that does not correspond to actual circumstances, the registration may be challenged or even cancelled. Companies should therefore treat a trademark as a long-term brand asset to be managed from the moment of filing, rather than treating the issuance of a registration certificate as the endpoint of trademark work.

Conclusion: What truly matters in a U.S. trademark application is the preparation and assessment that takes place before filing. For a company preparing to enter the U.S. market, a U.S. trademark application is not merely an administrative procedure. From brand naming, trademark clearance searches, and the filing basis, to the scope of goods/services, evidence of use, and ongoing post-registration maintenance — every step can affect the scope of brand protection and the commercial risks a company will face in the U.S. market going forward. This is especially true for cross-border e-commerce, AI, SaaS, app, education, and content-creation businesses, for which the brand is often one of the most important intangible assets upon entering the U.S. market.

Rather than waiting until a trademark application is refused, an infringement complaint is received, or significant marketing expenditures have already been made, it is far better to complete trademark clearance searches and risk assessment before entering the U.S. market.

If you are considering filing a U.S. trademark application, or if you have already encountered issues such as a trademark refusal, a conflict with a prior mark, evidence of use, or trademark enforcement, please feel free to contact Attorney Jane Li at jane@lionslawgroup.com. We can provide U.S. trademark application services and related legal support tailored to your specific circumstances.