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US TRADEMARKS

This surprises most people, so it is worth stating plainly. Since August 2019, applicants, registrants, and parties domiciled outside the United States must be represented before the USPTO by an attorney licensed in a US state. It is not optional and it is not a formality — filings made without one do not go through.

We act as US attorney of record for foreign applicants and registrants, from the first filing through renewal.

Applications

Searching the register before filing, choosing the right basis, writing the goods and services description, and preparing specimens that survive examination.

 

The description is the part clients underestimate: too narrow and you have paid for protection you cannot use, too broad and the examiner refuses it.

Office action responses

If the USPTO refuses your application, you have three months from the issue date to respond. One three-month extension is available for a $125 fee, but it must be requested before the original deadline runs and before any response is filed. Applications filed through the Madrid Protocol under Section 66(a) keep the old six-month period and cannot extend at all.

Miss it and the application is abandoned. Reviving it costs money and time, and sometimes is not possible.

Refusals usually come down to likelihood of confusion with an existing mark, mere descriptiveness, or a specimen the examiner will not accept. Each needs a different answer. Send us the office action and we will tell you which one you have and what it will take.

Keeping the registration alive

A registration is not permanent. A Declaration of Use under Section 8 is due between the fifth and sixth year, and renewal under Section 9 in the ninth to tenth year, with filings every ten years after that. These are the deadlines foreign owners miss most often, because nothing arrives in the mail to remind them and the mark simply dies.

We docket these dates and contact you before they matter.

TTAB disputes

Oppositions and cancellations before the Trademark Trial and Appeal Board, including cases where someone has registered a mark you have been using for years.

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