You don’t need to understand the trademark laws of every country, but it’s good to have a basic grasp of frequently targeted regions like the U.S., Europe, and China. The U.S., under the common law system, has many differences from other countries’ trademark laws, emphasizing practicality and party autonomy. This means that applying a Korean perspective to U.S. trademark law can lead to misunderstandings.
Proof of Use Is Required for Registration
The most significant feature of U.S. trademark law is the “use-based system.”
Unlike the registration-based system adopted by most other countries, where “you obtain rights upon registration,” in the U.S., “rights are acquired through usage.” Simply put, “the first to use a trademark has the rights.”
Most countries, like those in Europe and Asia, still mainly follow a registration-based system. However, many are increasingly incorporating use-based elements, such as requiring evidence of use every three years (e.g., the Philippines and India). Still, these elements are supplementary to the core registration system.
In contrast, U.S. trademark law adheres firmly to the use-based principle, with certain aspects of registration incorporated for federal consistency.
When filing a U.S. trademark application, you must declare whether the trademark is “in use” or “intended for use.”
If it is already in use, you must submit a Declaration of Use with evidence of commercial use in the U.S. Examples of acceptable evidence include export invoices, photos from trade fairs, or screenshots showing that the product is available for purchase online.
Submitting a trademark as “in use” allows for faster approval and stronger trademark rights after registration.
Even under the Madrid System for international registrations, applicants must submit a formal Declaration of Use when the U.S. is a designated country.
Intent-to-Use Applications
If you apply under “intent-to-use,” registration will only be completed once you provide evidence of use within six months of the approval decision.
Additionally, after registration, you must submit a Declaration of Use with supporting evidence every five years to maintain the trademark.
If your trademark is already registered in another country, U.S. law allows for registration without immediate evidence of use. However, this type of registration is considered to have less enforcement power than one based on actual use. In practice, this distinction often becomes relevant only during disputes. Regardless, you are still required to submit a Declaration of Use every five years.
Make Use of the Supplemental Register
A unique feature of U.S. trademark law is the Supplemental Register, which complements the Principal Register.
The Supplemental Register allows trademarks that currently lack distinctiveness (e.g., descriptive terms) to be registered if the applicant intends to use them. Over time, if the trademark gains secondary meaning and becomes recognizable to consumers, it can be transferred to the Principal Register.
Although trademarks on the Supplemental Register have limited rights, they still allow the use of the ® symbol and provide some ability to challenge similar marks.
Coexistence Agreements Are Permissible
The U.S. also accepts Letters of Consent from prior trademark holders. If the owner of an earlier trademark agrees to coexistence, the U.S. Patent and Trademark Office (USPTO) may approve the registration of a similar trademark. While many countries also permit coexistence agreements to varying degrees, the U.S. system is particularly accommodating of this practice.