When Ukrainian businesses enter the American market, they face a number of challenges. One of the most significant is the highly competitive and saturated environment. The U.S. market has been developing for more than three hundred years, and during this time it has formed its own business rules, legal procedures, and a strong culture of intellectual property protection.
With more than twenty-seven years of experience in intellectual property law, I have helped clients build strategies for protecting intangible assets in Ukraine and internationally. Today, continuing my professional development, I am studying at ChicagoKent College of Law, Illinois Institute of Technology, specializing in International Intellectual Property.
During the fall semester, I took the course American Trademark Law, taught by a well-known American scholar and attorney, Dean Woody. It was an incredibly dynamic and intellectually engaging course. Law schools in the United States frequently apply the Socratic method, which requires students to be fully prepared and actively participate in discussions. Professors constantly ask questions about legal doctrine and case law, and the entire process takes place in professional legal English.
Our LL.M. program includes practicing lawyers from more than 50 countries, which makes the discussions particularly interesting, as participants bring perspectives from different legal systems. For me, the most fascinating aspect of the course was exploring the subtle differences between American trademark law and the systems used in Europe and Ukraine.
The Principle of Use: The Key Difference
The most important distinction between the American trademark system and those in Ukraine and Europe concerns the basis for acquiring trademark rights.
In Ukraine and most European jurisdictions, the system follows the “first-to-file” principle, meaning that trademark rights arise from the moment a registration application is filed.
In contrast, the United States applies the “first-to-use” principle. This means that trademark rights arise from the first actual commercial use of the mark, not merely from filing an application.
This approach has certain advantages. For example, the American system rarely contains so-called “dead trademarks” — marks that are registered but never used in commerce, which are relatively common in European registries. However, for foreign entrepreneurs this creates a different legal framework that must be clearly understood before entering the market.
The Importance of Trademark Searches
Before filing a trademark application in the United States, it is essential to conduct a comprehensive trademark search.
The purpose of this search is to ensure that the proposed mark does not conflict with existing trademarks.
Particular attention is paid to:
- similarity in spelling and pronunciation;
- meaning of the word in English;
- possible translations or associations.
If a brand name originates from another language, the U.S. Patent and Trademark Office may examine its translation or semantic meaning in English. This is an important consideration for Ukrainian companies entering the U.S. market.
Restrictions on Trademark Names
The American system imposes strict limitations on descriptive trademarks.
For example, it is generally impossible to register the word “Fruits” for the sale of fruits, because such a name merely describes the goods and lacks distinctiveness.
Therefore, businesses are encouraged to develop:
- unique or invented words;
- distinctive brand combinations;
- or marks that already have a history of use.
Why Ukrainian Brands Can Have an Advantage
I often recommend that entrepreneurs preserve their Ukrainian brand names, particularly if those brands already have a history in the market.
In the United States, evidence of prior use and reputation can be very important in establishing trademark rights. A brand with a documented history may therefore have strategic advantages during the registration process.
Intangible Assets as Strategic Business Value
In the United States, intellectual property is treated as a key business asset.
A trademark can:
- be sold;
- licensed;
- used as collateral;
- or serve as the basis for obtaining financing.
For this reason, American legal practice often recommends separating intellectual property assets from operating businesses.
A common strategy is to establish a separate LLC that owns trademarks, copyrights, and other intangible assets. This structure can provide stronger legal protection and better risk management.
The Importance of Comprehensive Protection
Trademark registration is only one element of a broader intellectual property protection strategy. Equally important are:
- copyright agreements;
- non-disclosure agreements (NDAs);
- employment contracts;
- trade secret protection.
Only a comprehensive approach allows companies to effectively protect their innovations, brands, and reputations in the global marketplace.
In future articles, I will discuss additional practical aspects of intellectual property protection in the United States and share legal tools that help Ukrainian companies successfully expand into international markets.
Olena Yaremchuk
Intellectual Property Lawyer
Founder of the International Legal Consulting Group
Yaremchuk & Partners
www.yaremchukandpartners.com
