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Designed for professionals responsible for trademark applications, registration, and enforcement in...
Designed for professionals responsible for trademark applications, registration, and enforcement in the United States, this course centers on the Lanham Act (15 U.S.C. §§1051-1141n) and systematically covers the operations of the USPTO (United States Patent and Trademark Office), government fees, the unique use-based system, Section 8/9/15 affidavits, the TTAB (Trademark Trial and Appeal Board),enforcement in federal court, and the new procedures introduced by the 2020 Trademark Modernization Act (TMA)—all essential information for Japanese companies seeking to protect their brands in the world’s largest consumer market. A patent attorney will provide a systematic explanation of these topics.
Key Points of This Article
- The United States is the world’s only country to adopt a full-fledged use-based system, centered on the Lanham Act (1946)
- Application Types: Four categories—1(a) Use-Based, 1(b) Intent-to-Use, 44(d)/(e) Foreign Application-Based, and 66(a) Madrid Protocol
- Section 8 Declaration of Use (every 5–6 years, 9–10 years, and upon renewal) is mandatory—failure to file results in automatic cancellation
- Section 15 Incontestability—Gains strong protection after 5 years of continuous use
- 2020 Trademark Modernization Act (TMA): New provisions for Ex Parte Expungement and Reexamination
- Foreign applicants must be represented by a U.S. attorney (2019 rule amendment)
- Enforcement typically involves concurrent proceedings in Federal District Court and the TTAB (Trademark Trial and Appeal Board)
UNITED STATES TRADEMARK
A comprehensive guide to the U.S. trademark system and practice by a patent attorney, covering the world’s largest consumer market. This book systematically explains everything from USPTO applications to the use-based system, TTAB proceedings, new TMA procedures, and enforcement in Federal Court across 12 sections.
Table of Contents
- Executive Summary
- Basic Structure of the System and Legal Sources
- Types of Applications (Distinguishing Between 1(a), 1(b), 44, and 66)
- Standard Workflow and Timeline Management
- Estimated Government Fees
- Trademark Requirements and the Unique Nature of the Use-Based System
- Section 8/9/15 Affidavits (Mandatory Maintenance)
- Opposition, Cancellation, and TTAB Proceedings
- Enforcement and Infringement Response
- 2020 TMA and New Procedures (Expungement/Reexamination)
- Differences Between the Japanese and U.S. Systems
- Practical Checklist for Japanese Companies
1. Executive Summary
U.S. trademark practice is centered on the Lanham Act (15 U.S.C. §§1051-1141n) as its core, with 37 C.F.R. Parts 2-7 (Trademark Regulations), the TMEP (Trademark Manual of Examining Procedure), and case law (Federal Circuit and Supreme Court) governing applications, examination, and disputes. It is a hybrid system of Anglo-American common law and statutory law.The most distinctive features, not found in other countries, are the “use-based system” and the “Section 8/15 Affidavit.”
Four Key Points to Understand in U.S. Trademark Practice
- Choose from four application types: 1(a) Use, 1(b) Intent to Use, 44(d)/(e) Foreign Application Basis, or 66(a) Madrid Protocol
- Government fees are denominated in USD. Application fees range from USD 350 to 750 per class (depending on the TEAS classification).
- Key examination features include the “use” requirement and the “Specimen of Use”—continuous submission is mandatory to maintain registration
- Enforcement is handled by the Federal Court and the TTAB (Trademark Trial and Appeal Board). ITC Section 337 may also be utilized
2. Basic Structure of the System and Legal Basis
The “primary law” of the U.S. trademark system is the Lanham Act (1946 Trademark Act, 15 U.S.C. §§1051-1141n), which has evolved into the current system through multiple amendments.Core provisions include the definition of a trademark (§45), registration requirements (§§1051-1058), the effect of registration (§1115), infringement (§1114), unfair competition (§43(a)), and criminal penalties (18 U.S.C. §2320).The most recent significant amendments include the 2020 Trademark Modernization Act (TMA) and the 2019 USPTO Rule (requiring representation by a U.S. attorney).
Role of the USPTO
The USPTO (United States Patent and Trademark Office)—an agency under the Department of Commerce—is responsible for trademark examination, registration, and TTAB proceedings. Its headquarters are in Alexandria, Virginia. Electronic filing via TEAS (Trademark Electronic Application System) is the standard procedure.
Judicial Forums
| Agency | Jurisdiction and Characteristics |
|---|---|
| TTAB (Trademark Trial and Appeal Board) | A specialized trademark adjudication body within the USPTO. Handles oppositions, cancellations, and appeals of refusals. |
| Federal District Courts | Exclusive jurisdiction over trademark infringement and cancellation lawsuits. 94 courts |
| Federal Circuit Court of Appeals | Exclusive jurisdiction over appeals from TTAB decisions |
| U.S. Supreme Court | Court of last resort |
| U.S. International Trade Commission (ITC) | Injunctions for Import Trademark Infringement (Section 337) |
3. Application Types (Distinction Between 1(a), 1(b), 44, and 66)
| Section | Application Type | Characteristics | Utilization by Japanese Companies |
|---|---|---|---|
| §1(a) | Use-based | Already in use in the U.S. at the time of filing | Where there is a history of sales in the U.S. |
| §1(b) | Intent-to-Use (ITU) | Declaration of Intended Future Use | Pre-entry provisional application |
| §44(d) | Paris Convention Priority | Within 6 months of the Japanese parent application | Linkage with Japanese Application |
| §44(e) | Based on a foreign registration | Application based on a Japanese registered trademark | Registration possible without an affidavit of use |
| §66(a) | Via the Madrid Protocol (designation of the United States) | U.S. designation in an international registration | Streamlined process for multiple countries |
Key difference regarding affidavits of use: If registered under §44(e), submission of evidence of use at the time of registration is not required, but the Section 8 affidavit in the 5th or 6th year is mandatory. The same applies to registration via the Madrid Protocol (§66(a)). While this is a favorable option for Japanese companies, the maintenance obligations remain unchanged.
4. Standard Process and Timeline Management
① Filing (USPTO TEAS)
→
② Examination (6–9 months)
→
③ Response to Office
Action
↓ ④ Publication → ⑤ Opposition Period (30 days) → ⑥ Registration / Notice of Allowance
↓
⑦ For Section 1(b), submit Statement of Use (within 6 months of NOA) → ⑧ Section 8/15 Affidavit (5–6 years)
Action
↓ ④ Publication → ⑤ Opposition Period (30 days) → ⑥ Registration / Notice of Allowance
↓
⑦ For Section 1(b), submit Statement of Use (within 6 months of NOA) → ⑧ Section 8/15 Affidavit (5–6 years)
Estimated Timeframe: With smooth §1(a), §44(e), and §66(a) proceedings, approximately 8–12 months from filing to registration. For §1(b), several additional months after submitting the Statement of Uncontested Use (SOU).
5. Estimated Government Fees
| Item | Fee (USD) | Conversion to Japanese Yen |
|---|---|---|
| Application Fee TEAS Plus (1 Class) | USD 250 | Approx. 37,500 yen |
| Application Fee TEAS Standard (1 section, 2025 revision) | USD 350 | Approx. 52,500 yen |
| Fee for Adding Goods/Services (Custom Listing) | USD 200 per class | Approx. 30,000 yen |
| SOU/Statement of Use (§1(b)) | USD 150 | Approx. 22,500 yen |
| Opposition Fee (TTAB) | USD 600 | Approx. 90,000 yen |
| Section 8 Affidavit (5–6 years) | USD 325 | Approx. 48,750 yen |
| Section 15 Affidavit (Non-Contestable) | USD 250 | Approx. 37,500 yen |
| Renewal Fee (10 years, Section 9+8) | USD 525 | Approx. 78,750 yen |
2025 USPTO Fee Revision: Significant price increases effective January 18, 2025. Increases are particularly notable for TEAS Standard classifications. TEAS Plus (USD 250) requires no custom description; selection must be made from the TM5 ID List.
6. Specifics of Trademark Requirements and the Use-Based System
Registerable Trademarks
- Word Marks, Figurative Marks, and Combined Marks
- Three-dimensional trademarks (3D Marks)
- Sound Marks, Color Marks, Scent Marks, and Tactile Marks
- Motion Marks
- Collective Marks and Certification Marks
The Core of the Use-Based System
A Unique and Fundamental Principle of the U.S.: The U.S. is the only country in the world to adopt a full-fledged use-based system. Trademark rights are acquired and maintained through “actual commercial use.” The “Use it or lose it” principle is strictly enforced, and the continuous submission of Specimens of Use is mandatory.
Absolute Grounds for Refusal (§2)
- Generic Terms and Descriptive Marks (§2(e)(1))
- Geographical Indications (§2(e)(2)(3))
- Surnames Only (§2(e)(4))
- Functional Shapes (§2(e)(5))
- Deceptive Marks (§2(a))
- Unauthorized Use of Another’s Name or Image (§2(c))
Relative grounds for refusal (§2(d))
- Likelihood of confusion with prior applications or registered trademarks
- Comprehensive evaluation based on the DuPont factors (13 factors)
7. Section 8/9/15 Affidavits (Mandatory Maintenance)
The U.S.’s Unique and Most Critical Maintenance System
U.S. trademarks require the continuous submission of evidence of use even after registration. Failure to submit evidence results in automatic cancellation—this is the strictest maintenance system in the world.
Section 8 Declaration of Use (§1058)
| Timing | Filing Deadline | Required Information |
|---|---|---|
| 5th–6th Year (First Filing) | Between 5 and 6 years after registration | Affidavit of Use + Specimen + Fees |
| Years 9–10 (Combined §8 & §9) | 9–10 years after registration | Section 8 + Section 9 Renewal |
| Every 10 years thereafter | Every 10 years | Section 8 + Section 9 Renewal |
| Grace Period | 6 months after the deadline | Accepted for an additional fee |
Section 15 Incontestability (§1065)
Acquires "Incontestability" after 5 years of continuous use
- A petition may be filed after 5 years of continuous use following registration
- Grounds for cancellation or invalidation are limited (claims such as descriptiveness are not permitted)
- Gain strong protection — the most important milestone in U.S. trademark strategy
- Standard practice to file concurrently with Section 8 (during the 5th–6th year)
8. Opposition, Cancellation, and TTAB Proceedings
Opposition During Publication Period (§13)
Oppositions may be filed with the TTAB (Trademark Trial and Appeal Board) within 30 days of trademark publication. Requests for extension of this period are also possible (up to 180 days). A key feature is discovery (evidence disclosure) in accordance with the FRCP, which is a significant cost factor for Japanese companies.
Cancellation Proceedings (§14)
- Within 5 years of registration: Cancellation may be sought on any grounds
- After 5 years from registration: Only limited grounds (non-use, fraudulent acquisition, or grounds not protected by non-contestability)
- Three consecutive years of non-use constitutes a presumption of abandonment (§1127)
9. Enforcement of Rights and Response to Infringement
Enforcement of Rights in Federal Court
Remedies in Federal District Court (§§ 1116–1118)
- Injunctions (provisional and permanent)
- Alternative claim for damages or the infringer’s profits (§1117(a))
- Treble Damages—Willful Infringement (§1117(b))
- Statutory Damages—Counterfeit Trademarks: USD 1,000–2,000,000 per class (§1117(c))
- Attorneys' Fees (exceptional cases, §1117(a))
- Confiscation and Destruction of Infringing Goods
Border Enforcement (CBP)
Registering a trademark with U.S. Customs and Border Protection (CBP) (IPR Recordation) allows for the prevention of counterfeit imports. Registration fee: USD 190; valid for 20 years.
ITC Section 337
Through a Section 337 investigation by the U.S. International Trade Commission (ITC), it is possible to obtain an exclusion order against imported trademark infringements. Conclusion within 15–18 months. Can be pursued concurrently with federal district court litigation.
10. 2020 TMA and New Procedures (Expungement/Reexamination)
Three Major Reforms of the 2020 Trademark Modernization Act (TMA)
Effective December 18, 2021. Introduces new procedures aimed at removing “dead wood” (inactive trademarks). An important strategic tool for Japanese companies as well.
Three New Procedures
| Procedure | Eligibility | Filing Period | Fee |
|---|---|---|---|
| Ex Parte Expungement | Trademarks that have never been used | 3–10 years since registration | USD 400 per class |
| Ex Parte Reexamination | Trademarks that were not in use at the time of registration | Within 5 years of registration | USD 400 per class |
| Letter of Protest | Notice of Facts for Opposition Prior to Publication | Before publication | USD 50 |
11. Differences Between the Japanese and U.S. Systems
| Item | Japan | United States |
|---|---|---|
| System | Registration System (First-to-File System) | Use-based system |
| Application Form | 1 type | 4 types (1(a)/1(b)/44/66) |
| Agent | Patent Attorney | U.S. attorney required (2019–) |
| Declaration of Use | None | Section 8 (5–6 years, every 10 years) |
| Non-Contestability | None | Section 15 (Acquired after 5 years) |
| Revocation for Non-Use | 3 years | Presumed abandoned after 3 years of continuous non-use |
| Judicial Structure | Patent Office → Intellectual Property High Court | USPTO/TTAB → Federal Court |
| Treble Damages | None | Available (willful infringement) |
12. Practical Checklist for Japanese Companies
Before Filing
- Appointment of a U.S. attorney (required since 2019)
- Prior trademark search via USPTO TESS (U.S. trademark database)
- Selecting the Application Form: §1(b) ITU before entering the market; §44(e) if a Japanese registration exists
- Cost Reduction Using TEAS Plus (No Custom Description Required)
After Filing
- Prioritize Section 8 (5th–6th year) in calendar management
- File Section 15 concurrently to establish non-contestability
- Continuous retention of evidence of use (specimens)
- Renewal every 10 years (Combined §8 & §9)
- If infringement is discovered, file a lawsuit in Federal Court and consider seeking treble damages
- Register with CBP IPR Recordation for border enforcement (USD 190, 20 years)
- Utilize TMA Expungement/Reexamination against Competing Trademarks
Summary
The U.S. trademark system is unique globally for its strict use-based registration requirements and the Section 8/15 affidavit system. For Japanese companies to successfully establish their brands in the U.S. market, the key lies in prioritizing strategic selection of application types (1(a)/1(b)/44(e)/66(a)), managing Section 8 deadlines, and securing non-contestability through Section 15.Please also see our Madpro international trademark application and trademark registration services.
Consultation on U.S. Trademark Applications
EVORIX Intellectual Property Law Firm provides comprehensive support for trademark applications and enforcement in major North American countries, including the United States. Our experienced patent attorneys, working in collaboration with local U.S. attorneys, handle everything from strategic selection of application types to Section 8/15 deadline management, TTAB proceedings, and infringement responses in Federal Court.
Sources & References
▼ Primary Legislation
- Lanham Act (15 U.S.C. §§1051-1141n, Trademark Act of 1946)
- 37 C.F.R. Parts 2-7 (Trademark Rules of Practice)
- Trademark Modernization Act of 2020 (TMA)
- 2024-2025 USPTO Fee Schedule
- 18 U.S.C. §2320 (Criminal Penalties for Trademark Counterfeiting)
- 19 U.S.C. §1337 (ITC Section 337)
▼ Official Sources
- USPTO Official Website: uspto.gov
- TESS (U.S. Trademark Search): tmsearch.uspto.gov
- TMEP (Trademark Manual of Examining Procedure): tmep.uspto.gov
- TTAB (Trademark Trial and Appeal Board): USPTO Official Site
- WIPO IP Portal (USA): wipo.int
- WIPO Lex: wipo.int/wipolex
- Member of the Madrid Protocol (November 2, 2003): WIPO Madrid System
- U.S. Customs and Border Protection (CBP): cbp.gov
▼ Explanatory Materials from Japanese Organizations
- JETRO (Japan External Trade Organization) Report: "Intellectual Property System in the United States"
- Japan Patent Office “Information on Foreign Industrial Property Rights Systems (United States)”
- INPIT (National Institute of Industrial Property Information and Training) Intellectual Property Information on Emerging Countries
▼ International Agreements
- Paris Convention (U.S. accession: 1887)
- Madrid Protocol (U.S. acceded November 2, 2003)
- TRIPS Agreement (WTO accession: 1995)
- USMCA (United States-Mexico-Canada Agreement) (Entered into force in 2020)
- CPTPP (U.S. withdrew)
*This article is based on the above primary sources and official information as of April 2026 and is intended to provide general information. As laws and regulations are subject to change, we recommend consulting primary sources and experts for the latest information. For specific decisions regarding individual cases, we recommend consulting experts, including local agents.
AUTHOR / Author
Takefumi Sugiura
EVORIX Intellectual Property Law Firm, Representative Patent Attorney
Assists clients across a wide range of industries—including IT, manufacturing, startups, fashion, and healthcare—from patent, trademark, design, and copyright applications through to trials and infringement litigation. Also well-versed in intellectual property strategies for cutting-edge fields such as AI, IoT, Web3, and FinTech. Member of multiple organizations, including the Japan Patent Attorneys Association, the Asian Patent Attorneys Association (APAA), and the Japan Trademark Association (JTA).
