US trademark protection: which filing basis and use evidence should a foreign business prepare?

A French or EU trademark does not cover the United States. Strong protection there requires a US registration, obtained by filing directly with the USPTO or by extending an international registration. There are several legal grounds for such a filing, and they do not carry the same obligations. A foreign business must also plan for qualified representation and preserve the required evidence, including after registration. Choosing the route should reflect the actual project rather than only the filing cost.

Preparation should begin before sales, a distribution agreement or packaging production. A sign available in Europe may encounter earlier rights in the United States, while a European specification may need adaptation to US requirements. An international trademark strategy connects those checks with launch objectives. It avoids assuming that a six-month priority claim guarantees registration or permanently removes the need to use the mark. For international legal teams, a consistent file supports correspondence with US counsel and monitoring of office notices throughout the process. It also identifies which commercial documents the business must supply before statements are made.

Expertise and the scope of the assessment

An intellectual property assessment helps evaluate, before any filing, the availability of the sign and the filing basis. Nathalie Dreyfus’s qualifications can be checked through the official directories: the Paris Court of Appeal 2026 directory (PDF), under trademarks and designs, the Court of Cassation directory, 2025 edition (PDF), and the CNCEJ directory. Listings relate to defined specialisms. A private opinion is distinct from a court-ordered investigation. The engagement is defined according to the matter and the skills required.

Search earlier rights before selecting the route

A prior-rights search should not be limited to whether an identical sign appears on a register. Similar signs, goods and services and relevant uses must also be considered. In the United States, a mark that is simply used, even if unregistered, can also block an application. A trademark law assessment should therefore include the commercial context instead of promising availability from an identical-name search alone.

The owner, sign to be filed and activities genuinely planned should be determined. Filing the name alone (word mark) or the logo does not protect the same thing. Two points often cause difficulties. First, the application must be filed in the name of the actual owner of the mark: in the United States, an application filed by someone who is not the owner (for example the director instead of the company, or a distributor) is void and cannot be corrected. Second, the mark filed must match the mark shown on the products: if the logo changes between filing and launch, the use evidence may be refused. The launch timetable should allow these matters to be examined before making commitments that are difficult to change, especially where distributors are already preparing their own communications.

Distinguish the filing bases

Section 1(a): established use

This basis requires the mark to be already used to sell the goods or services in the United States (“use in commerce”). Statements must be supportable and an appropriate specimen supplied for the goods or services concerned, meaning evidence of that actual use (a label, packaging or an online sales page, for example) for each good or service. The existence of a business or a website accessible from the United States is not sufficient by itself. USPTO guidance on filing bases provides the starting framework.

Section 1(b): a genuine intention to use the mark

Where use has not begun, a bona fide intention to exploit the mark may provide a basis. That intention should be taken seriously and documented. The mark is registered only once actual use has been proven. That evidence must be filed within six months of the USPTO’s Notice of Allowance, a deadline that can be extended in six-month periods up to three years in total. Launch plans, agreements and relevant preparation should be retained without manufacturing supposed use to complete the file.

Sections 44(d) and 44(e): priority and foreign registration

Section 44(d) allows the applicant to rely on the date of its first foreign application, provided the US application is filed within six months. It is not, by itself, a basis for final registration. It must be combined with another basis: use, intent to use or foreign registration. Section 44(e) relies on a registration in the applicant’s country of origin. This route avoids proving use before registration, but the applicant must have a genuine intention to use the mark in the United States and will need to prove use to maintain it.

Section 66(a): a US designation under Madrid

The owner of a trademark can extend it to the United States through the Madrid international trademark system. The designation remains subject to US examination and does not guarantee acceptance of the specification or sign. The basic file, international registration and responses to any refusals must be coordinated. Madrid should not be treated as an automatically accepted right in every designated territory.

Plan for a qualified US attorney

The USPTO requires foreign-domiciled applicants to have a US-licensed attorney. For Madrid applications under section 66(a), representation is required when a refusal or other office action needs a response. Contact details and authority should be arranged according to the procedure concerned rather than assumed from the international filing.

French counsel can coordinate strategy and documents with US counsel. That coordination does not replace the qualification needed to practise before the USPTO.

Prepare genuine, appropriate use evidence

The USPTO distinguishes the representation of the mark (the “drawing”) identifying the requested sign from a specimen showing actual use. Its official specimen guidance explains that mock-ups, proposed packaging and digitally altered images are not acceptable evidence of use. Advertising may be suitable for services without being sufficient for goods. The purpose of the document should be checked before it is submitted.

Collection should relate to the goods and services actually claimed. Labels, packaging and commercial webpages must demonstrate relevant use. An isolated invoice should not be presumed sufficient. Preserving dates, versions and trading conditions allows counsel to review the evidence before a declaration is made. Commercial teams should understand why projected visuals and real transactions cannot be treated as equivalent.

Budget for costs and maintenance

The USPTO’s official information states a base electronic fee of USD 350 per class for the relevant section 1 and 44 applications. Surcharges and later filings may add costs. This excludes professional fees and should not be presented as a single price for a Madrid designation, for which a US individual fee is paid to WIPO.

The budget should include searching, drafting, counsel, possible responses, use evidence and monitoring. Official fees should be checked at the transaction date. Maintaining a direct registration includes a use declaration between the fifth and sixth anniversaries and formalities around the ninth and tenth anniversaries, then periodically, as explained in the official maintenance timetable.

A Madrid extension also requires US formalities, including a declaration of use under section 71 between the fifth and sixth anniversaries of the US registration of the extension, alongside the ten-year renewal of the international registration. The calendars can have different starting points. A record should therefore distinguish the US registration, international registration and contractual obligations. Paying WIPO does not automatically satisfy every US requirement. Responsible team members and advisers should be assigned to each relevant deadline.

Collaboration between French and US counsel

French IP counsel connects the project, existing registrations and commercial documents. US counsel checks the eligible basis, local requirements and office responses. Lawyers working on distribution contracts ensure commitments are consistent with the rights strategy. This allocation avoids treating a use declaration as a routine formality and clarifies each adviser’s responsibility. It also helps operational teams provide the evidence needed at the right time.

Illustrative case study

A fictional business owns a French trademark and plans US cosmetics sales. A distributor requests evidence of protection before signing. The team wants to claim priority from its French application and submit a packaging mock-up as evidence of use, although sales have not begun and the specification has not been reviewed against the US project.

Counsel would examine the foreign filing date to check whether a French priority claim is still open, the possible registration basis and launch preparations. The mock-up would not be used as evidence of use. The sign and goods would be checked before selecting the relevant route, with a timetable for evidence. The agreement would define the distributor’s uses and collection of the necessary documents, including records of the version actually used.

The intended result would be a procedure consistent with the project’s true stage rather than a premature declaration. Monitoring would connect office notices, the launch and maintenance deadlines. This illustrative scenario does not describe a client matter or guarantee acceptance or a registration timeframe. The office’s examination remains a separate step in the process.

A five-step filing process

1. Search earlier rights. Assess signs, goods and US uses.
2. Choose the legal basis. Check use, intent and foreign rights.
3. File with counsel. Confirm owner, specification and representation.
4. Document use. Connect evidence and distribution agreements.
5. Maintain and monitor. Plan declarations and trademark monitoring.

FAQ on US trademarks

Is French priority enough to secure registration?

No. Priority must be distinguished from the basis permitting registration. The applicable sections’ conditions must be met. Filing in France does not resolve the US examination or remove earlier-rights issues.

Does a foreign basis permanently remove use requirements?

No. Certain routes permit registration without a prior specimen, but US maintenance obligations remain. The intention to exploit and future declarations should be considered in the initial strategy, not only when an anniversary approaches.

Can a mock-up or edited visual be submitted as a specimen?

No. An image illustrating future use does not demonstrate actual use. Mock-ups and digitally altered materials should not be presented as commercial evidence. The file must be reviewed with local counsel before submission.

Does Madrid remove the need for US counsel?

No. As soon as the USPTO issues an office action requiring a response (a provisional refusal, for example), a US attorney must act. Representation and deadlines must be organised even where the international application was submitted through another route.

Why work with Dreyfus

Dreyfus advises businesses and their counsel on trademark strategy and international coordination. The objective is to connect assets, the commercial launch and qualified advisers with an evidence and maintenance timetable operational teams can understand. Each local requirement is addressed within the appropriate professional scope.

Conclusion

A US application should reflect actual use and the existing portfolio. To define the search, the legal basis of the filing and coordination with local counsel, contact Dreyfus for an initial confidential discussion.

Dreyfus & Associés law firm partners with a global network of lawyers specializing in intellectual property.