Trade Mark Management – key differences Aus vs U.S

19.11.2019 IP Australia

Many Australian business owners are looking to infiltrate the American market and for good reason. The United States of America (USA) is the world’s largest economy - with a population of over 325 million people - what business wouldn’t want to operate in this economy?

If you’re thinking about expanding your business and entering the USA market, it’s important to understand how to protect your brand while you’re there, as there are fundamental differences between the Australian and USA IP systems. For example, Australian’s that file directly with the USPTO must use an IP attorney. So if your permanent legal residence or principal place of business is outside of the USA, you will need a USA-licensed attorney to represent you in all trade mark matters.

Another notable difference is how to manage your trade mark after it is granted protection. Once your trade mark is granted, your first renewal documents need to be filed between the fifth and sixth years after registration. Your next renewal documents are due between the ninth and tenth years after registration, or four years after your first renewal. From then, you can renew your trade mark every ten years indefinitely; however you will need to prove that you are still using the mark in commerce at regular intervals. If you don’t use it, you will lose it.

If you miss the filing deadline there is a grace period of six months to file the maintenance documents, however this does incur additional fees. If you miss both the initial filing date and the grace period, your trade mark will expire and you will have to file a new application.

While there are some differences between our two IP systems, there are also some similarities. Take for example trade mark registration in the USA – the most common used by Australians – which like us follows f the ‘first to use rule. This means that if there is a dispute between you and another party over a trade mark, whoever used it first commercially is likely to be able to claim rights, even if they didn’t register it first.

Don’t get caught out over differences in our systems, learn more on our website and good luck taking your business to the USA.


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