US and EU Trademark Protection for Japanese and Korean Brands

You can protect a Japanese or Korean brand in the U.S. and EU through national filings or the Madrid Protocol. In the U.S., choose the right filing basis and plan for proof of use. In the EU, you can register first, but you must use the mark within five years. Foreign applicants need local counsel in key stages.

What is the fastest, safest path to a U.S. registration?

If you are already selling in the U.S., file under Section 1(a). If you have not launched, file an intent to use under 1(b), or use Section 44(e) if you have a home registration, or Madrid Section 66(a). Each path has a different proof of use timeline under the Lanham Act (15 U.S.C. §§ 1051–1127).

• Section 1(a), use in commerce. You submit a specimen that shows current use in U.S. commerce. Foreign use does not count. See the USPTO’s TMEP on specimens and use in commerce.
• Section 1(b), intent to use. You secure a filing date, then file a Statement of Use later, with extensions if needed. This is the right move if your U.S. launch is firm but not yet live. See our guide to the Statement of Use (SOU) and this update on US Statement of Use Extensions: 2026 USPTO Rules.
• Section 44(e), foreign registration. If you own a valid registration in Japan or Korea for the same mark and goods or services, you can proceed to U.S. registration without proving U.S. use at that time. You will still need to maintain the mark with later use evidence and meet all U.S. substantive rules.
• Section 66(a), Madrid Protocol U.S. designation. You file an international registration via JPO or KIPO and designate the U.S. The USPTO examines under U.S. law. The registration can issue without prior U.S. use, but later maintenance requires use.

A candid tip from practice. If your proof of use will be solid in 3 to 6 months, 1(b) is often cleaner than 44(e). It gives you control over the identification and goods evidence that will support enforcement later. We see too many 44(e) and Madrid filings that inherit narrow or awkward identifications from the home case, which then limit U.S. protection.

{{IMAGE: Side by side chart of U.S. filing bases 1(a), 1(b), 44(e), 66(a) with “use timing” and “pros and cons” rows | Choosing the right U.S. filing basis for a Japan or Korea brand }}

Madrid or direct national filing for the U.S. and EU?

Madrid is efficient when you need multiple countries quickly. You file once through JPO or KIPO and designate the U.S. and EU. But the U.S. part lives under U.S. law, and refusals must be handled by a U.S. attorney. Direct national filings can be more flexible on the identification and timing.

• United States. A Madrid designation still faces U.S. examination. If an Office Action issues, a foreign‑domiciled owner must appoint U.S. counsel to respond. You should budget for class specificity, likelihood of confusion refusals, and the USPTO’s shorter response windows.
• European Union. You can designate the EU through Madrid, or file directly for an EU trade mark at EUIPO. Both routes create a unitary EUTM that covers all EU member states if granted. The legal framework is Regulation (EU) 2017/1001.

When would we avoid Madrid. If the home identification is too narrow or uses local terms the USPTO or EUIPO will not accept, a direct national filing lets us tailor the specification to U.S. and EU practice from day one.

For background on filing from abroad, see our primer on Filing a US Trademark from Outside the United States: What Foreign Applicants Need to Know and this step guide, How to Register an EU Trademark (EUTM): Complete 2026 Guide.

What “use” evidence is needed, and when?

U.S. law requires use in U.S. commerce to register under 1(a), or later proof of use to complete 1(b). Foreign use alone is not enough. A 44(e) or 66(a) case can register without prior U.S. use, but you must show use to keep the registration. See TMEP 900 on specimens and use, and 15 U.S.C. §§ 1051, 1126, and 1141–1141n.

In the EU, no proof of use is required to file or register an EUTM. But after registration, the mark becomes vulnerable to revocation if not put to genuine use in the EU within five years. See EUTMR Article 58.

Practical guardrail. If you obtained a broad Madrid‑based U.S. registration but only use a few items, your unused goods or services are targets for non‑use attacks.

{{IMAGE: Timeline comparing U.S. specimen at filing or SOU later vs EUTM five-year post-registration use window | How “use” timing differs in the U.S. and EU }}

Do I need local counsel in the U.S. and EU?

Yes in the U.S. Foreign‑domiciled applicants, registrants, and parties must be represented by a U.S.‑licensed attorney before the USPTO. This is a hard rule the USPTO enforces.

In the EU, non‑EEA applicants must be represented by a qualified professional for most proceedings before EUIPO. Direct filings may be accepted without a representative, but any follow‑on action usually requires one. For oppositions and appeals, representation is essential.

If you need counsel on file now, you can appoint us for U.S. attorney representation. A licensed attorney will handle your USPTO responses within the current deadlines.

How does Paris priority work across Japan, Korea, the U.S., and the EU?

File your first national application in Japan or Korea, then file in the U.S. and EU within six months to claim the earlier date under the Paris Convention. You can do this through national filings or through Madrid. The goods and services must be the same or contained within the original scope.

Three practical points we insist on with priority claims:

• Align the identifications. Draft the home list with U.S. and EU practice in mind so it ports cleanly within six months.
• Docket the six‑month date early. Priority claims are lost if you miss it, and extensions are not available.
• Watch translation consistency. The English translation that ties the goods and services to the home filing needs to match how the USPTO and EUIPO classify them.

{{IMAGE: Simple flow diagram from JPO/KIPO filing day to six-month Paris priority window to U.S. and EU filings | Using Paris priority within six months }}

What should Japanese and Korean owners watch in 2025–2026 U.S. practice?

Two things affect foreign filings the most. First, the Trademark Modernization Act created expungement and re‑examination tools that make non‑use challenges easier. Madrid‑based registrations that cover unused goods or services are frequent targets. Second, many Office Actions now have a three‑month response deadline with a paid three‑month extension option. Always check the live USPTO guidance for current timing.

We build portfolios with this in mind. If use is not imminent, we narrow U.S. identifications to what you can launch within a year, then expand later with new filings.

See our step guide on How to Respond to a USPTO Office Action: Step-by-Step and our enforcement primer, Trademark Monitoring and Enforcement: Protecting Your Brand After Registration.

{{IMAGE: Annotated timeline showing 3-month USPTO response period and optional 3-month extension, plus checkpoints for evidence gathering | Working within the USPTO’s shorter response periods }}

U.S. vs EU filing order, and three real-world scenarios

Start with the market that will launch first, or where risk is highest. If the U.S. launch is six months ahead of the EU, file the U.S. application first and claim Paris priority into the EU. If your product will debut across the EU first, do the reverse. For more on the trade‑offs, read US vs EU Trademark: Which Should Your Business File First?.

• K‑beauty skincare with a JPO registration, no U.S. sales yet. File 44(e) to secure fast U.S. registration, but keep the list tight to expected U.S. use to reduce TMA risk. File an EUTM in parallel, or designate the EU via Madrid if your JPO list is already EU‑acceptable.
• Consumer electronics with an imminent U.S. retailer launch. File 1(b) now with a clear channel‑of‑trade plan. We time the SOU to the first shipments and keep extensions as a backstop.
• Fashion label targeting EU first, then U.S. File an EUTM directly to control the identification and avoid translation issues, then use Paris priority for a U.S. filing within six months.

A GTC field note. A Seoul skincare client designated the U.S. and EU through Madrid. The USPTO refused based on identification issues and a likelihood of confusion. We entered as U.S. counsel, amended the identification to USPTO‑accepted terms, secured a consent agreement to overcome the 2(d) refusal, and used the optional three‑month extension to finalize evidence. The EU designation sailed through after we aligned the goods wording with EUIPO practice.

Maintenance and enforcement after registration

U.S. registrations require periodic filings with evidence of use. Madrid‑based U.S. registrations file use under Section 71. EUTMs face five‑year non‑use revocation risk and periodic renewal. Build a monitoring plan and keep clean evidence files for each key product.

• Read our quick primer on Madrid Protocol Section 71 Renewals: US-EU Compliance 2026.
• For budget and timing of new filings, see How Much Does It Cost to Trademark a Name in 2026? A Complete Breakdown and always confirm the live USPTO fee schedule before you file.

If you are planning filings now, we can run a clearance search, draft identifications that will pass in both markets, and act as U.S. counsel for the USPTO. Start with our U.S. trademark service or EU trademark service. If you are expanding to multiple countries, we can manage a Madrid international filing and centralize the docket.

We are an attorney‑led team founded in 2016 with 5 offices and 11 in‑house lawyers. For trademarks, we manage filings and enforcement across 107 jurisdictions. If you want a practical plan for the U.S. and EU, we will map it to your launch dates and risk profile.