Calling All Entrepreneurs: Everything You Need to Know About Registering Your Australian Trade Mark in the United States

As a U.S.-based trade mark attorney at Gerben Law Firm PLLC, I frequently receive inquiries from our Australian clients seeking to register their trade marks in the United States. Here are some answers to our most commonly asked questions.

Registering Australian trademarks in US

1. My trade mark is already registered in Australia. Does this registration protect my trade mark in the U.S.?

It is important to note that your Australian trade mark rights do not apply in the United States. Therefore, if you plan to expand your sales into the U.S. in the future, you should file for a trade mark registration in the U.S. to make sure your rights are protected.

2. What are the benefits of applying for a U.S. trade mark?

In today’s expanding global marketplace, it may be foreseeable for you to expand your market to sell in the U.S. in the future. It is vital to protect your trade mark in the U.S. if you intend to sell your goods or services in the U.S. By registering your trademark in the U.S., you will have legally enforceable rights in the event that someone else starts using your trade mark in the United States.

3. Do I need to have a business in the U.S. in order to register my trade mark in the United States?

No, you do not need to have a registered business entity in the United States to apply for a trade mark registration in the United States. An Australian citizen, or an Australian company, can own a United States trademark.

4. Why is conducting a US trademark search important?

A trademark attorney should always be hired to conduct a complete federal, state and common law trademark search in the United States before a trademark filing is made. An attorney’s search (with specialized software) can spot potential conflicts with your trademark before you file it. Using software available on-line to conduct a trademark search is often misleading and the results should not be trusted. In addition, a US trademark attorney should conduct a state and common law trademark search. These searches can spot a problem that could lead to a lawsuit for you in the future (these are unique rights that are possible outside the federal system under U.S. trademark law).

5. How long does it take to register a trademark in the United States.

After your attorney has conducted a search for you, he or she can assist you in filing your trade mark application with the U.S. government. Once the U.S. government receives your trademark application an attorney for United States Patent and Trademark Office will review your mark to ensure that it does not conflict with a pre-existing trademark and complies with all applicable rules and statutes. It typically takes 6-8 months for the U.S. government to review your trade mark and issue a registration certificate.