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
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.
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
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).
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.
| 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) |
| 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.
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).
| 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.
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.
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.
| 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 |
Acquires "Incontestability" after 5 years of continuous use
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.
Remedies in Federal District Court (§§ 1116–1118)
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.
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.
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.
| 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 |
| 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) |
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.
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.
*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).