Should you find one firm to coordinate US and EU IP cases? In 2026, Attorney Shen Jinlong discusses dual-jurisdiction collaboration, and where cross-border collaboration most easily breaks down

Should you find one firm to coordinate? My answer is: in most cases, yes, but the key is not "one firm," but whether "one firm can simultaneously manage both the US and EU tracks." The pitfalls in US and EU IP cases rarely lie in understanding the law of a single country; rather, they arise when the two sets of procedures intersect and no one makes the call. In practice, we generally recommend that clients with more than 5 applications per year, or with cross-border e-commerce stores in operation, have the same team coordinate from the outset. The rule differences between the United States Patent and Trademark Office (USPTO) and the European Union Intellectual Property Office (EUIPO), viewed separately, are each just one line; layered together, they form a net.

US 15 U.S.C. §1052 and EU absolute grounds are not the same thing

The core statutory provision for US trade mark examination is 15 U.S.C. §1052, which sets out grounds for refusal such as descriptiveness, genericness, and deceptiveness quite plainly, and examiners focus on the chain of evidence for "use in commerce." On the EU side, EUIPO relies on the absolute grounds under Article 7 of the EU Trade Mark Regulation. It sounds like a pair of twins, but the actual standard of assessment differs. For example, for the same descriptive word, in the US you can claim acquired distinctiveness under Section 2(f) by submitting 5 years of use evidence; although the EU also has an acquired distinctiveness path, examiners require more fragmented territorial coverage of evidence, often requiring it to be broken down by member state. Many clients encountering this for the first time assume that "if it passed in the US, it will definitely pass in the EU," only to receive an absolute grounds refusal at EUIPO, and when they go back to supplement evidence, both time and costs double. The value of coordination is aligning the evidentiary standards on both sides before filing. We handle this type of work in US and EU trademark and patent filing page. , and usually provide dual-jurisdiction filing path recommendations at the search stage.

The response period is only 3 months; it can be extended, but it will cost money.

The response deadline for a US trade mark Office Action is 3 months, and you can request one extension for another 3 months, but the extension official fee is not cheap, and an extension does not mean the problem gets smaller. The response period for an EUIPO Office Action is usually also 2 to 3 months, depending on the type of notice. If both sides receive refusals in the same week, the team's scheduling will clash. We generally recommend first calculating which side's deadline is harder and which side's evidence can be reused, then deciding who responds first. What is most feared is that the US agent finishes the response, the EU agent does not know, and completely different arguments are used, after which one side is cited as an adverse record. The place where cross-border collaboration most easily breaks down is "each side responded, but the positions were never aligned."

The Madrid System saves application fees, not management costs

Many clients use the Madrid system to designate the United States and the European Union in a single application, thinking it saves trouble. What it saves is the initial filing fee, but the subsequent Section 8 and Section 15 declarations, EU renewals, and opposition responses still have to be handled separately in each jurisdiction. The U.S. Section 8 requires submission of evidence of use between the 5th and 6th years after registration, and Section 15 can be asserted together for incontestability; missing Section 8 directly leads to cancellation of the registration. On the EU side, there is no corresponding declaration system, but there is a risk of revocation for non-use after 5 years, and anyone can file for revocation at any time. The two timelines are different, and calendar reminders alone are not enough—someone has to keep watch. We have seen clients who focused only on the U.S. and had their EU mark hit with a non-use revocation filed by a third party, only to find that the response deadline had already passed by the time they received notice.

Preliminary injunctions and TROs: the speed difference can be several weeks

What cross-border e-commerce encounters most often is not registration, but infringement complaints and preliminary injunctions. In U.S. federal courts, a temporary restraining order (TRO) can be issued within 14 days on an ex parte application, and in fast cases accounts are frozen within 48 hours. The EU has no unified TRO mechanism, and courts vary widely from country to country; Germany and the Netherlands are relatively fast, while some Southern European countries can take months. If the same product is hit with a TRO in the U.S. and detained by customs in the EU, the response logic on both sides is completely different: in the U.S., you need to negotiate a settlement and unfreeze funds as quickly as possible; in the EU, you may first have to deal with customs IP recordation and border detention procedures. A coordinating team can monitor account and goods status on both sides at the same time, avoiding a situation where one side is settling while the other is still expanding losses. In this area, we usually work in coordination with the border measures process for overseas intellectual property.

On patents, the UPC has changed how Europe plays the game

Since the Unified Patent Court (UPC) began operating in June 2023, the litigation landscape for European patents has changed. Previously each country litigated separately; now a single UPC action can obtain an injunction covering multiple member states. For U.S. companies, this means the risk exposure of European patents has shifted from "one suit per country" to "one suit, many countries." If a coordinating team only understands USPTO examination and not UPC jurisdiction and opt-out rules, the European patent may be dragged into Unified Court litigation without anyone realizing it. In practice, we generally advise clients with a European market to make their opt-out decision before 2026; after that, they can only accept UPC jurisdiction. This decision point is often not proactively flagged by single-country agents.

The timing gap in copyright registration affects the damages tier

The timing of registration with the U.S. Copyright Office (USCO) is critical. Under 17 U.S.C. §412, only if a work is registered before infringement occurs or within 3 months after it occurs can statutory damages and attorney's fees be claimed; otherwise, only actual damages are available, and the burden of proof is on a completely different level. The EU has no unified copyright registration system, and protection arises automatically in each country, but the methods of securing evidence differ in cross-border enforcement. For product images, detail pages, and packaging designs commonly used by e-commerce sellers, if copyright registration was only done in China, the other side will challenge the validity of the registration when enforcing in the U.S. A coordinating team will schedule U.S. registration before the product launches; once the 3-month window passes, the negotiating leverage drops significantly.

When you can skip coordination

Not every situation requires it. For a single trademark, in a single country, with no e-commerce store running, finding a local agent yourself is entirely feasible. The test can be simple: as long as two or more jurisdictions are involved and the procedures on both sides overlap in time, or there are urgent matters such as platform complaints, TROs, or customs seizures, the cost-effectiveness of coordination becomes clear. We generally suggest clients first conduct a dual-jurisdiction risk inventory, listing the key milestones for the U.S. USPTO, TTAB and the EU EUIPO, UPC in one table, and then decide whether to consolidate management. Many gaps are not because lawyers are unprofessional, but because no one looks at the two tables together. For more details on cross-jurisdictional procedures, see intellectual property legal services in other countries, or contact us directly Shen Jinlong Lawyer for a chat.

Attorney Shen Jinlong, foreign-related intellectual property team at Guangdong Zhiming Law Firm, has long handled U.S. and EU trademark, patent, and copyright matters. Consultation hotline: 0755-25986969.

Disclaimer: The content of this article is merely a general sharing of legal information and does not constitute legal advice for any specific case. Intellectual property procedures in the United States, the European Union, and member states may be adjusted at any time; for strategy choices in specific cases, please consult a professional lawyer based on the actual circumstances.