US and EU Trademark Protection for Japanese and Korean Brands

You can protect a Japanese or Korean brand in the US and EU through national filings or the Madrid Protocol. In the US, 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 at key stages.

What is the fastest, safest path to a US registration?

If you are already selling in the US, 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 to 1127).

• Section 1(a), use in commerce. You submit a specimen that shows current use in US 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 US 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 US registration without proving US use at that time. You will still need to maintain the mark with later use evidence and meet all US substantive rules.
• Section 66(a), Madrid Protocol US designation. You file an international registration via JPO or KIPO and designate the US. The USPTO examines under US law. The registration can issue without prior US 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 US protection.

Madrid or direct national filing for the US and EU?

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

• United States. A Madrid designation still faces US examination. If an Office Action issues, a foreign-domiciled owner must appoint US counsel to respond. 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 US 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?

US law requires use in US 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 US 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 to 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 it is not put to genuine use in the EU within five years. See EUTMR Article 58.

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

Do I need local counsel in the US and EU?

Yes in the US. Foreign-domiciled applicants, registrants, and parties must be represented by a US-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 US attorney representation. A GTC US-licensed attorney acts as counsel of record and handles your USPTO responses within the current deadlines. Our FAQ answers the most common questions foreign applicants ask about this rule.

How does Paris priority work across Japan, Korea, the US, and the EU?

File your first national application in Japan or Korea, then file in the US 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 as, or contained within, the original scope.

Three practical points we insist on with priority claims:

• Align the identifications. Draft the home list with US and EU practice in mind so it ports cleanly within six months. Class Assist helps you check where each product or service sits before you draft.
• 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.

What should Japanese and Korean owners watch in 2025 to 2026 US 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, most Office Actions now carry 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 US 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.

US vs EU filing order, and three real-world scenarios

Start with the market that will launch first, or where the exposure is highest. If the US launch is six months ahead of the EU, file the US 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 US sales yet. File 44(e) to secure fast US registration, but keep the list tight to expected US use to reduce TMA exposure. File an EUTM in parallel, or designate the EU via Madrid if your JPO list is already EU-acceptable.
• Consumer electronics with an imminent US 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 the EU first, then the US. File an EUTM directly to control the identification and avoid translation issues, then use Paris priority for a US filing within six months.

A GTC field note. A Seoul skincare client designated the US and EU through Madrid. The USPTO refused based on identification issues and a likelihood of confusion. We entered as US 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

US registrations require periodic filings with evidence of use. Madrid-based US registrations file use under Section 71. EUTMs face five-year non-use revocation 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 our pricing page and the breakdown in How Much Does It Cost to Trademark a Name in 2026? A Complete Breakdown. The USPTO base application fee is $350 per class; EUIPO charges €850 for one class, €50 for the second, and €150 for each further class.

If you are planning filings now, we can run a clearance search, draft identifications that will pass in both markets, and act as US counsel for the USPTO. A Free Trademark Check is the quickest way to find out whether your mark is clear in either register. Then start with our US 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. If you want a practical plan for the US and EU, we will map it to your launch dates and use timeline.

Sources

• USPTO Trademark Manual of Examining Procedure (TMEP)
• USPTO trademark fee schedule
• EUIPO fees and payments
• WIPO Madrid System