Trademark
A trademark is a distinctive sign (word, design, sound) registered to identify products or services, protected in France by the INPI under the French Intellectual Property Code (CPI), and in the United States by the USPTO under the Lanham Act of 1946.
Definition
A trademark protects a distinctive sign used to identify the products or services of a business, for a renewable 10-year term. In France, it is governed by articles L711-1 et seq. of the French Intellectual Property Code (CPI), filed with the Institut National de la Propriété Industrielle (INPI), or with the EUIPO for the European Union. In the United States, it is governed by the Lanham Act (15 U.S.C. § 1051 et seq.) and filed with the United States Patent and Trademark Office (USPTO) based on actual use in commerce (Section 1(a)) or on a bona fide intent to use (Section 1(b)). Protection is territorial: a French INPI trademark does not cover the United States and vice versa.
In plain English
If you launch a brand in both France and the United States, two separate filings are required. France is first-to-file: the first to file prevails, even if someone else has used the trademark for years without filing. The United States is first-to-use: actual use in commerce creates the right, and a USPTO filing only consolidates it. This divergence has a major practical consequence: in the United States, you can lose your trademark to a competitor who proves prior use in a given geographic area, even without a registration. The Madrid system allows you to extend a French trademark to 130 countries through a single filing, but the United States is known for a demanding examination process that frequently rejects Madrid extensions for inadequate identification of goods or services.
RWM transatlantic case study
For a French executive launching in the United States, we typically proceed in three steps: a USPTO clearance search via TESS, a direct USPTO filing under Section 1(b) on intent-to-use, then a Statement of Use once the trademark is commercially used in the United States. USPTO filing fees start at 350 dollars per class under the TEAS Standard form. Examination takes 8 to 12 months on average, followed by a 30-day opposition window. Once registered, maintenance requires a Section 8 Declaration of Use between years 5 and 6, then every 10 years together with the Section 9 Renewal. On the French side, an INPI filing costs 190 euros for one class, plus 40 euros per additional class. We systematically recommend a portfolio audit before any France-to-U.S. flip to avoid a chain-of-title break when trademarks move from the SAS to the C-Corp, which would be fatal in any infringement action.
Points to watch
- France first-to-file, U.S. first-to-use: filing strategies differ radically.
- USPTO Section 8 between years 5 and 6, otherwise the registration is canceled automatically.
- TM (unregistered) versus the R symbol (registered): only the R fully protects in the United States.
- The Madrid system extends protection but does not eliminate a strict local examination.
- Mandatory chain-of-title audit before any flip or M&A transaction.