Registering a U.S. Trademark: 5 USPTO Rules Cross-border Sellers Must Know

Many cross-border sellers register U.S. trademarks for brand registry, to stop hijackers, or to have a basis for complaints. But the U.S. Patent and Trademark Office (USPTO) has been steadily removing non-compliant filings, and tens of thousands of marks have been terminated or cancelled.

Based on the USPTO’s official guidance, here are the five rules sellers most need to know. Official sources for each are listed at the end.

Rule 1: Foreign-domiciled applicants must use a U.S.-licensed attorney

Since August 3, 2019, the USPTO has required trademark applicants, registrants, and TTAB parties whose permanent legal residence or principal place of business is outside the United States to be represented by an attorney licensed to practice law in the United States. This includes Canadian applicants.

Attorneys must also confirm they are active members in good standing of their bar and provide their bar information.

What it means for sellers: When filing through an agency abroad, confirm that the Attorney of Record on your filing is a real U.S.-licensed attorney. Many filings the USPTO has removed involved misused attorney credentials and forged signatures.

Rule 2: Filers must use a verified USPTO.gov account, and accounts can’t be shared

Since August 6, 2022, anyone who files or edits trademark forms must be logged in to a verified USPTO.gov account. Verification is online through ID.me or by a notarized paper form (about two to three weeks to process).

Account sharing is not permitted under the USPTO’s Terms of Use. Owners represented by a U.S.-licensed attorney can e-sign without verifying, but must verify if representation ends or to appoint a new attorney.

What it means for sellers: Don’t let others use your account, and don’t file through someone else’s.

Rule 3: Specimens must show real use, not mock-ups

A specimen must show the mark actually used in commerce. The USPTO lists reasons for refusal, including:

• Digitally created or altered images, mock-ups, and printer’s proofs
• The specimen doesn’t match the mark as applied for, or shows only part of it
• The specimen shows different goods than those in the application
• For goods, advertising alone without a way to purchase
• Webpage specimens without the URL and access date

For goods, a webpage specimen should show the mark near the product, the price, and a shopping-cart button, plus the URL and the date accessed or printed.

What it means for sellers: Use real live listings or photos of actual products bearing the mark, not design renderings or edited images.

Rule 4: Pick the right filing basis; intent to use doesn’t mean immediate registration

The two most common filing bases are:

• Use in commerce: submit a specimen, plus the date of first use anywhere and first use in commerce.
• Intent to use: not yet in use, but a bona fide intent to use within the next three to four years. You cannot register until you show use in commerce and file the proper form.

What it means for sellers: If your product isn’t listed yet, you can file on an intent-to-use basis to secure your place, but you’ll need to prove use later to register.

Rule 5: Maintain your registration on time, and expect audits

Registration isn’t the end. The USPTO requires:

• Between years 5 and 6: a Section 8 declaration of use, with a specimen and fee
• Between years 9 and 10, and every 10 years after: a combined Section 8 and 9 renewal

If you miss the deadline, the registration will expire or be cancelled, and you’ll need to apply again.

The USPTO also runs a post-registration audit program:

• Random audits: registrations with at least one class of four or more goods/services, or two classes with two or more each, may be selected when a declaration is filed.
• Directed audits: if a specimen appears digitally altered or comes from a specimen-farm website.
• Audited owners must prove use for the identified goods; unsupported goods are deleted, with a $250 fee per class; no response means the whole registration is cancelled.

What it means for sellers: List only goods you actually sell or genuinely plan to sell; don’t pad the list to claim more categories.

Summary

To file or review a U.S. trademark, see our U.S. Trademark services.

Sources (official USPTO)

• New rule requires foreign-domiciled trademark applicants and registrants to have a U.S.-licensed attorney
• Identity verification
• Specimen refusal and how to overcome the refusal
• Application filing basis
• Maintaining your registration
• Post-registration audit program
• Fighting fraud: USPTO targets 10,500+ invalid trademark filings

This article is general information, not legal advice. Consult an attorney about your filing.