Do U.S. Trademark Applications Based on Foreign Filings Have to Adopt the Exact Same Goods and Services Identification?

When filing a U.S. trademark application based on a foreign application or registration, whether under Section 44 of the Paris Convention for the Protection of Industrial Property or through the Madrid Protocol, a common question arises: Do the goods and services have to be identical to the foreign filing?

The answer is no, but there is an important limitation.

The Rule: Same Scope, Not Same Words

The United States Patent and Trademark Office does not require identical wording.  Instead, the U.S. identification of goods and services must be:

• Within the scope of the foreign application or registration
• Not broader than that foreign filing

In practice, this means you can:

• Narrow the identification
• Clarify ambiguous language
• Rewrite it to comply with U.S. standards

But you cannot expand beyond what was originally covered abroad.

Why Copying and Pasting Is Usually a Mistake

It can seem “safe” to simply copy and paste the goods and services listing from a foreign trademark application or registration into a US trademark application.  However, copying verbatim often creates unnecessary cost and friction. Here are several common pitfalls.

1. Excess Character Fees Add Up Quickly

Foreign applications, especially from Europe, often include long, catch-all descriptions. The USPTO now imposes additional fees when identifications exceed certain lengths.

In each class, if your goods and services description runs over 1,000 characters, you pay an additional fee for that class. Each additional 1,000 characters triggers an additional fee. European trademark applications often contain more than 2,000 characters per class, so these fees can add up quickly across classes.

A direct copy and paste can easily push you into avoidable filing costs without adding meaningful protection. In the US, it isn’t necessary (and usually not advisable) to identify every single possible product you are selling or may sell. In many situations, limiting the number of goods or services identified can be strategically important, for prosecution, maintenance, and enforcement.

2. Foreign Spellings Create Problems

Foreign filings often use non-U.S. spelling or terminology. For example, generally, “colour” is used and accepted by the USPTO instead of “color.”

This creates avoidable problems.  The foreign wording may not match entries in the USPTO ID Manual, which defines the pre-accepted format for many goods and services description.  Then, when you can’t use the ID Manual entries, you are forced into using a higher-fee free-form identification.  Those additional fees are paid on a per class basis and can add up.

3. Indefinite or Overbroad Language Triggers Refusals

Foreign jurisdictions frequently allow broad phrases like “services relating to software” or “goods in the field of technology” The USPTO does not. These types of descriptions are routinely refused as indefinite.

Copying them into a U.S. application often results in an Office Action requiring clarification, reclassification, or deletion. You’ll end up spending more time and money responding to the Office Action, and that likely could have been saved by constructing the initial trademark application differently.

4. Classification Does Not Always Translate Cleanly

Even though most countries follow the Nice Classification system, they apply it differently. Foreign applications may combine multiple concepts into a single class or use broader category descriptions.  It is quite common to see foreign applications with very longlists of goods and services descriptions.

The USPTO requires more precision. A copied identification may result in misclassification issues, requirements to split or amend classes, and follow-up requirements to show more specimens to support a large list of goods and services.

5. Strategic Narrowing Can Improve Outcomes

A tighter, more focused U.S. identification can strengthen your application.  For example, it can reduce exposure to likelihood of confusion refusals, it can align better with actual or intended use, and it can simplify future maintenance filings.  There is rarely a strategic advantage to carrying over unnecessary breadth.

Bottom Line

You are not required to replicate the exact wording of the foreign application or registration. You are only required to stay within its scope and ensure the identification in the US application finds support in the foreign application or registration.

In many cases, the best approach is to treat the foreign identification as a ceiling, rewrite the goods and services using USPTO-compliant language, and eliminate unnecessary length and ambiguity.  A thoughtful rewrite at the outset reduces fees, avoids Office Actions, and results in a cleaner, more enforceable registration.