In practice, the U.S. trademark system (like many areas of American jurisprudence) reflects a distinctive combination of historical developments, economic scale, federal and state legal structures, and international treaties to which the U.S. is a signatory, all together forming a system that many believe is needlessly complex.

The United States is the world’s largest consumer market, spending approximately $20 trillion annually in personal consumption and accounting for roughly 30% of global household consumption.  It is also home to an exceptionally large number of small and emerging businesses.  According to data from the USPTO, there will be over 800,000 "classes" filed in trademark applications this year. (NB: The USPTO counts number of classes that were filed, rather than number of trademark applications, so a single application with three classes is counted three times.)

At the same time, the legal framework governing trademark rights in the United States is layered. Trademark rights are protected not only through federal laws, but also through common law use and state-level protections. Trademark disputes can be adjudicated in administrative proceedings before the USPTO’s Trademark Trial and Appeal Board (“TTAB”), federal courts (generally one of the 94 federal district courts that are grouped into 12 regional circuits) and state courts. Together, these overlapping systems create a legal environment that can be complex to navigate.

Throughout this series, we examine how these structural features interact. 

English Common Law:

U.S. trademark law did not originate from a statutory registration regime. Instead, it developed from English common law principles, where courts addressed disputes involving “passing off” situations in which one merchant misrepresented its goods as those of another. The focus in these early cases was not ownership of a mark in the abstract, but the protection of commercial goodwill and the prevention of consumer deception in the marketplace.

From the outset, trademark rights were tied to commerce, not formal registration. These principles carried into American law and continue to shape trademark protection. Early U.S. federal efforts to regulate trademarks, including statutes enacted in 1870 and 1876, were ultimately struck down as unconstitutional, leaving protection largely grounded in state law and common law doctrines until the enactment of the Lanham Act in 1946, which remains the basis of federal trademark law to this day.
 
This historical path helps explain a defining feature of the modern U.S. system: trademark rights are closely tied to actual use of the trademark in commerce. Federal registration can enhance trademark rights, but does not replace the need for use of the mark in the U.S. As a result of this bifurcated system (i.e., common law use and registration), priority is not determined solely based upon who first filed a trademark application. 
 
Trademark registration alone is not determinative of a party's rights; there are many more nuances in the U.S. system. Where use in U.S. commerce cannot be demonstrated, or even cannot be demonstrated in a particular geographic area, the ability to enforce or even maintain a registration is significantly limited. This interplay between use and registration is a direct continuation of the system’s common law origins, and it underpins many of the complexities explored throughout this series.

U.S. Constitution:
 
The structure of U.S. trademark law is further shaped by the U.S. Constitution, which is the primary source of the federal government's authority. Ratified in 1789, the Constitution expressly grants Congress the power to regulate patents and copyrights under the Intellectual Property Clause (Article I, Section 8, Clause 8), but it does not reference any federal powers over trademarks. As a result of this, federal trademark law developed under a different constitutional basis: Congress’s authority to regulate interstate and foreign commerce (Article I, Section 8, Clause 3). This distinction was not merely theoretical. (In The Trade-Mark Cases, 100 U.S. 82 (1879), the Supreme Court invalidated earlier federal trademark statutes because they were not sufficiently tied to interstate commerce, affirming that federal trademark legislation did not arise from any reasonable interpretation of the Intellectual Property Clause of the Constitution.)
 
This constitutional footing continues to shape the system in meaningful ways. Since trademark rights are tied to commercial activity, the system developed as a layered framework in which federal, state, and common law rights coexist. Unlike patents and copyrights, which are the sole province of the federal government, trademark rights and infringement issues in the United States are often fact-specific, use-dependent, and geographically nuanced, even where federal registrations exist. Further, this constitutional basis gives rise to the concept that trademark law exists for the benefit of commerce, rather than for the benefits of the owners of the intellectual property. The fact that federal trademark registration arises from the rights of the U.S. federal government to regulate certain aspects of trade explains why the effect of a trademark on a consumer (e.g., will a consumer be confused?) is often the crux of federal trademark law and trademark decisions.  This reasoning also explains, at least in part, why a U.S. trademark registrant has to prove use of its mark in commerce with a Declaration of Use at prescribed periods of time. This aspect will be discussed in a future article.

As always, we recommend utilizing skilled local counsel that is familiar with the complexities of trademark law and procedures for each jurisdiction of interest. As you will learn in this series, skilled U.S. trademark counsel is an essential piece of the American Trademark Puzzle. As always, we stand ready to assist with any U.S. trademark issues, questions you may have, filings, and contentious matters.

Executive Summary
U.S. trademark law strictly requires that U.S. trademark registrations be tied to use of a particular mark for goods/services in U.S. commerce. While non-U.S. companies can secure a registration based upon intent-to-use, this requirement importantly includes a specific bona fide intent to use the mark on each and every good and service listed in a U.S. application.  When a maintenance document is filed in a U.S. registration, each and every good and service listed in that registration must be in current use in the U.S.  It is wholly irrelevant that the U.S. registration was derived from a broad International Registration or based upon a filing from a different country which allowed broader recitations.  The U.S. application or designation must only be for the goods/services that are in use/will be in use in the U.S. and you should maintain documentation that proves this intention.  The U.S. does NOT recognize the ability to hold “defensive” registrations.
Remember: Use of the mark for some goods/services in a particular class is not sufficient for proof that there is a bona fide intent with relationship to ALL of the goods/services in that class and/or to maintain all goods/services in an existing registration.
The fact that an owner of a U.S. registration (based upon a home country registration or as an IR designation) has 3 years from the date of registration to commence use and the first maintenance document proving use in the U.S. is not required until the 6th year of registration does NOT excuse a lack of bona fide intent.

Special Considerations for International Registrations
Many international clients add the United States to their global coverage using the Madrid System.  The quick and easy “click” system can be deceptively easy.  For the U.S., you must include Form MM18 (E), which is a sworn statement that there is a bona fide intent to use the mark in U.S. commerce.  You should also make liberal use of narrowing the scope of goods/services for the U.S. designation right in your Madrid filing.

When Filing a National Application in the U.S. with a Home Country Registration Basis
The mere fact that the home country registration has a broad list of goods/services does not mean that all of these goods/services should be included in the U.S. application.  The U.S. application can be for any portion of the goods/services, as long as there is the requisite bona fide intent-to-use the mark for the goods/services.

Document Bona Fide Intent
If another party challenges your U.S. application or registration, adversaries (and the tribunals to whom the adversaries complain) will look for objective, contemporaneous proof of intent or use, at the time of the U.S. application or designation. Useful examples of what might prove such intent include: a U.S.-specific product or service roadmap, budget or board approval for a U.S. launch, distributor or reseller agreements or emails mentioning U.S. distribution, U.S.-targeted marketing plans, prototype or packaging work tied to U.S. commercialization, or filings/communications related to U.S. regulation or compliance. Oral statements are helpful, but business documents are the strongest evidence and often decide disputes.  The more specific these documents are and the more closely tied to the mark in question, the better the position will be if the client’s application or registration is challenged by an interested third party.

Overinclusion: More Can be Less
Overly broad identifications commonly cause trouble in several ways:

1. When you want to enforce your rights, you may be in a precarious position asserting a registration that could have flaws (such as lack of bona fide intent at the relevant time);
2. In legal proceedings, the other side may secure deletions for unsupported goods or services and thereby gain a strategic advantage;
3. If the other side can prove that the overinclusive recitation was fraudulent, it may be able to delete WHOLE class(es) of goods/services (even if there is use for some of those goods/services) and the statutory benefits of registration as to those classes; and
4. When filing maintenance documents, the USPTO’s audit and Trademark Register “cleanup” efforts can force owners to prove use for multiple goods/services (and the audit targets goods/services for which there is least likely to be proof) or remove items from the registration.  The audit process can be arduous, time-consuming and expensive.

Fraud: A Caution
An opposing party seeing a laundry list of goods/services may very well assert a claim of fraud when attacking such a registration.  Specifically, such a party may allege (if it has a sufficient basis) that a statement to the USPTO was knowingly false and made with intent to deceive. Fraud is taken very seriously and can have severe consequences, if proven. While current case law requires proof of intent to deceive (i.e., that fraud is not established by mistake or poor record-keeping alone), there can be very real consequences even in connection with being targeted with a claim of fraud. Also, the allegation itself can increase costs, risks and exposures.  Of course, a tribunal can always find that an application or registration tainted by fraud is completely void (and thus, the owner loses all of the benefits of that registration, including any priority and/or constructive first use dates).
Best Practice: Carefully review each and every good or service identified in all U.S. applications and make a further careful review with each maintenance filing to ensure that the same meet the requirements of U.S. practice as explained above.  If there are existing applications or registrations that might be targeted by the USPTO and/or an interested third party: cull the recitations now!

USPTO and Overly Broad Recitations
The USPTO continues to introduce more procedures to try to ensure that only marks for goods/services that are entitled to a U.S. registration remain on the Register. In addition to the audit program (for maintenance documents) and the 2025 surcharges for non-complying and lengthy recitations, the USPTO also introduced expungement and reexamination procedures to make it easier (and less costly) for third parties to attack overbroad recitations.  Adopting proper strategies now can ensure the best protection for all clients.

Recommended Approach

1. Cull proactively. Review every U.S. application and registration and, at the appropriate time, proactively authorize us to remove any goods or services you could not convincingly document to a tribunal that there was a bona fide intent at the time of filing.
2. Limit Future Applications.  Only goods/services that meet the U.S. legal requirements should be included in new applications.
3. Maintenance Filings.  When filing a U.S. Declaration of Continued Use (filed during the 6th year of every registration and during every 10th anniversary year), carefully review and permanently delete goods/services which are not in use in the U.S., as required by U.S. law.
4. Keep documentation. For each application filed in the U.S. (as a national application or as a Madrid designation), keep records of the bona fide intent to use the mark in the U.S.  Similarly, maintain records of U.S. sales at the time of maintenance filings.

 
Conclusion
Having a U.S. registration that is enforceable without serious concerns of being attacked by the other side strengthens a client’s enforcement ability.  Also, U.S. trademark law considers whether there is a likelihood of confusion based primarily on the similarity of the marks and the relatedness of the respective goods/services.  There is no requirement that the targeted goods/services be identical.  Thus, while U.S. law does not recognize “defensive” trademark registrations, it does provide an umbrella of protection beyond the specific goods/services recited in a U.S. registration.
As always, we look forward to helping you navigate this aspect of U.S. trademark law and develop the best strategies.

As we all know, for the past few years the USPTO has been experiencing many delays in processing and examining applications and registration maintenance filings. The USPTO is working to shorten pendency and improve examination quality (with a goal of reducing pendency to 4½ months by 2027) by enhancing their IT systems, hiring new examiners, and using AI and cloud integration.  This would be a significant reduction from pendency peaks of close to 9 months by late 2024.

The USPTO is also working to reduce the number of fraudulent filings which has been a significant problem over the last several years. Bad actors use U.S. attorney credentials (with and without “permission”) to file fraudulent applications or to change existing applications/registrations to appoint themselves and get control over another’s applications or registrations. The reasons are many—to avoid the requirements for a legitimate U.S. attorney correspondent (for non-U.S. applicants).

Other scammers send fraudulent correspondence and invoices to applicants and registrants seeking payments from applicants and registrants.  A scam email, phone call or letter might include typos, misspellings or improper English, or come from an email address other than @uspto.gov.  If an email or letter about your existing application or registration seems suspicious, please let us know and we can review for you. You can report scams by emailing TMScams@uspto.gov with copies of the suspect correspondence.

Applications suspended for fraud may be permanently deemed to be void—even if the Applicant itself was the target of a fraudulent filer (even if the Applicant is blameless).  Further, these fraud-tainted filings often “block” later-filed legitimate applications for similar marks, which are themselves suspended until the fraud review is completed. The USPTO plans to implement AI to speed up the review process, which is currently done manually. The USPTO is also working with other government agencies (including the FBI and FTC) to identify scammers