Brian Johnson

US Trademark Protection for Chinese Brands

Brian Johnson helps Chinese companies protect their brands through US trademark registration, enforcement, and portfolio management at Masuda Funai in Chicago.

With 15 years of experience in intellectual property law, Brian focuses on US trademark prosecution and enforcement for Chinese brand owners. He manages trademark clearance searches, USPTO registration applications, office action responses, opposition and cancellation proceedings before the Trademark Trial and Appeal Board, and border enforcement through US Customs and Border Protection. His clients include Chinese consumer goods companies, e-commerce platforms, and food and beverage brands expanding into the US market.

Practice Focus

• ⚖️ Trademark clearance and registration — comprehensive clearance searches, USPTO application preparation and prosecution, and maintaining registration renewals
• 📜 Brand portfolio management — global trademark portfolio audits, filing strategy for US-China brand protection, and coordination with Chinese trademark counsel
• 🛡️ TTAB proceedings — opposition and cancellation proceedings before the Trademark Trial and Appeal Board
• 💼 Enforcement — cease-and-desist letters, domain name disputes under UDRP, and CBP border enforcement recordation for Chinese brands
• 🌐 Licensing and franchise — trademark licensing agreements, quality control provisions, and franchise disclosure compliance

Local Practice in Chicago

Masuda Funai has represented international companies in the United States since 1929, with a particular focus on Japanese and Asian clients entering the US market. Brian's Chicago-based practice benefits from the firm's long-standing expertise in cross-border intellectual property protection and its offices across the Midwest and Los Angeles.

Typical Client Matters

Brian manages trademark clearance and registration for Chinese consumer brands entering the US market. He conducts comprehensive clearance searches covering federal registrations, common law uses, state registrations, and domain name registrations. For brands with significant prior use or registration in China, he advises on claiming a priority filing date under the Paris Convention where the US filing is made within six months of the Chinese filing date.

When the USPTO issues an office action refusing registration, Brian prepares detailed legal and factual responses addressing specimen deficiencies, descriptiveness refusals under Section 2(e), likelihood of confusion refusals under Section 2(d), and any requirement for disclaimer of unregistrable matter. He manages the entire response process through to final registration, including ex parte appeal proceedings to the Trademark Trial and Appeal Board when necessary.

For Chinese brands facing trademark infringement in the US market, Brian develops enforcement strategies that include cease-and-desist correspondence, domain name disputes under the Uniform Domain Name Dispute Resolution Policy, Amazon Brand Registry enforcement, and Customs and Border Protection recordation to block importation of counterfeit goods.

Brand Protection Strategy for the US Market

Brian recommends that every Chinese brand entering the US market file trademark applications before launch, not after. Early filing establishes priority rights under US law and provides the foundation for enforcement against copycats. He advises clients to register both word marks and design marks covering their logos, and to consider colour mark and trade dress protection for distinctive product packaging.

Approach to Trademark Services

Brian provides Chinese clients with a comprehensive trademark service that covers not just USPTO registration but the full scope of brand protection in the United States. He advises on trademark selection strategy, helping clients avoid descriptive or generic marks that are difficult to register. He conducts knockout searches before filing to identify obvious conflicts, then comprehensive searches including common law sources before committing to a brand name.

He also counsels Chinese companies on the use of common law trademark rights acquired through use in commerce, even before federal registration is complete. This allows clients to begin using their mark in the US market while the registration application is pending, building goodwill that can support enforcement actions against later users.

Why Clients Choose to Work with This Office

Clients choose this practice because the team delivers clear, commercially focused guidance that reflects a genuine understanding of the international business environment. Every engagement begins with a detailed consultation to understand the client\u2019s specific objectives, risk tolerance, and timeline. Throughout the relationship, the team maintains open communication and provides practical recommendations that address both the legal requirements and the underlying business goals. This approach has earned the trust of a growing number of international clients seeking reliable counsel in an increasingly complex regulatory landscape.