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How to Register a Trademark in the United States: A Guide for Australian Businesses

  • Writer: Raymond Duffy
    Raymond Duffy
  • 2 days ago
  • 3 min read

The United States is one of the most attractive and lucrative markets for Australian businesses. Whether you're exporting products, selling online through Amazon or Shopify, licensing your brand, or planning a physical presence in the US, protecting your brand is essential.


But, your Australian trademark does not protect you in the United States. This article explains aspects Australian businesses need to know about registering a trademark in the United States.


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Why You Need a US Trademark Registration

The US market operates under strict trademark laws designed to:

  • protect consumers from confusion

  • protect brand owners from misuse

  • reward businesses that act early


If you plan to sell products or services into the United States, a US trademark registration:


  • Gives you nationwide exclusive rights

  • Allows you to enforce your rights

  • You can stop infringers, counterfeits, and copycat branding.

  • Gives access to Amazon Brand Registry

  • For Amazon US sellers, a US trademark is mandatory.

  • Prevents others from registering your brand

  • Improves brand value and investor confidence


Understanding the USPTO (United States Patent and Trademark Office)

The US trademark authority, the USPTO, examines and registers trademarks nationwide.


Step-by-Step: How to Register Your Trademark in the United States

1. Conduct a Comprehensive US Trademark Search

A detailed clearance search will assess:

  • identical and similar registered marks

  • pending applications

  • likelihood of refusal

  • marketplace conflicts


This step significantly reduces rejection risk. Greyson Legal conducts US-specific clearance searches and advises on filing risk and strategy.


2. Decide How You Want to File: Direct vs Madrid Protocol

Australian businesses have two filing options:


Option A. Direct Filing with the USPTO (recommended for the US)

Why? The United States has strict rules and often requires:

  • US-specific descriptions of goods/services

  • direct responses to objections

  • precise evidence of use

  • local legal representation for most steps


Direct filing gives you more control and usually better outcomes.


Option B. Filing via the Madrid Protocol

Suitable if:

  • you’re filing many countries at once

  • your brand is strong

  • cost efficiency is a major factor


But Madrid designations for the US have higher refusal rates.


Greyson Legal can help you choose the best path.


3. Select the Correct Filing Basis

The United States has two unique filing “bases”, called:


  • Use in Commerce - You already sell (or transport) the goods/services in the US.

  • Intent to Use (ITU) - You plan to enter the US market soon.


Most Australian businesses file as intent to use, because they haven’t yet launched in the United States at the time of filing.


4. Prepare the Application

Your US trademark application must include specific information, such as:- ownership details, goods/services description, the mark (word, logo, or combined), etc.


Greyson Legal can prepare your application to meet USPTO requirements.


5. USPTO Examination

Once filed, your application enters examination (approx. 6–9 months after filing).

The USPTO attorney may issue objections to the application if there are any issues, eg. likelihood of confusion.


Greyson Legal can help you manage responses in collaboration with US trademark attorneys when required.


6. Publication for Opposition

If accepted, the mark is published for 30 days. During this time, third parties may oppose the application. Oppositions in the US are formal legal proceedings before the Trademark Trial and Appeal Board (TTAB).


7. Registration

Once the opposition period closes, the mark either proceeds directly to registration or Notice of Allowance is required prior to registration.


Maintenance & Renewal Requirements in the US

US trademarks require more active maintenance than Australian marks, such as, filing a

Declaration of Use.


Cost of Registering a US Trademark

Costs vary depending on the number of classes, filing method (eg. direct or Madrid), complexity, and opposition risk. Greyson Legal can provide guidance on fees.


Need Help Registering Your Trademark in the United States?


Contact Greyson Legal – International Trademark Lawyers

📞 0411 248 885 📧 mail@greysonlegal.com 🌐 www.greysonlegal.com

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