Domestic Representation for
Foreign Rightsholders and Agents
If you are a foreign rightsholder wanting to file a new trademark application, please see our United States Trademark Registration page. If you want us to hire us as domestic representative for an existing application or registration, please email us with the serial or registration number of your mark, and the services you require.
If you are a law firm, associate or agent who represents foreign rightsholders, please email us for a table of our fees. Our fees include government charges as well as our responses to Office ActionsA letter issued by the USPTO indicating problems with the application, which may include reasons why the mark may be refused registration, or legally improper descriptions or classifications of goods/services. (Click for a more detailed explanation.), but do not include opposition proceedingsA proceeding usually brought by the holder of the same or similar mark arguing that the holder would be damaged by registration of applicant’s mark. Grounds include a likelihood of confusion with the holder’s goods/services. (Click for a more detailed explanation.), cancellation actionsA proceeding in the Trademark Trial and Appeal Board to cancel a trademark registration on the basis that a mark has been abandoned, or is generic, or was obtained by fraud, etc. (Click for a more detailed explanation.), coexistence agreementsAn agreement entered into with a third party to allow both parties to use the same or similar mark on different goods or services, or different classes of goods or services. (Click for a more detailed explanation.), concurrent use proceedingsA relatively rare proceeding by which two parties apply to use the same mark with restrictions as to modes or places of use (usually geographic restrictions). (Click for a more detailed explanation.) or requests to divideA request following the filing of an intent-to-use application, which permits certain goods/services in the application to proceed to registration under the mark. (Click for a more detailed explanation.) (for intent‑to‑use applicationsAn application for a trademark that the applicant has a bona fide intent to use, and which is not yet in use. Bona fide intent means that the applicant has taken concrete steps toward use of the mark. (Click for a more detailed explanation.)). There is no extra charge for filing an application on multiple bases (e.g. use, intent to use, foreign application, and foreign registration); or for a design or color mark.
In order to file an application, we need the following information:
- The owner’s legal name, place of formation or citizenship, and legal address;
- If the mark is a design, a black and white JPG image. We do not generally recommend registration of design marks in color unless the color is distinctive. For further instructions see our Drawing Requirements page.
- A description of the goods/services for which registration is sought. Please note that the USPTO now requires applicants to comply with the 11th Edition of the Nice Agreement, along with the USPTO amendments. For more information, see our goods & services page.
- The filing basis:
- For applications based on use, indicate whether the mark is in use in the United States, and if so, provide:
- If the mark is not in use, and not filed on the basis of a foreign priority, then it will be filed on the basis of intent‑to‑useAn application for a trademark that the applicant has a bona fide intent to use, and which is not yet in use. Bona fide intent means that the applicant has taken concrete steps toward use of the mark. (Click for a more detailed explanation.);
- For foreign-based applications, provide all foreign application and registration priority information.
Once you provide the above information, we will prepare “confirmation instructions” detailing the proposed filing. Prior to filing, we will conduct a limited search for identical trademarks in the USPTO and will notify you if there are any obvious obstacles to registration. Full availability &/or registrability searches are done by specialized search companies, which we can recommend.
For a description of the registration process in the USPTO see our flowcharts.
Before intent-to-use trademark applications can be registered, they must be converted to a use basis. If the mark is not already in use following the USPTO’s approval, extensions of the application must be filed every six months until use commences. However, if you are filing based on a foreign registration or pending application, you do not need to place your trademark in use in the United States in order for a registration to issue. But be advised that non-use in the United States for three years following registration constitutes prima facie abandonment of your mark.
Our flat-fee rate for Madrid Protocol filings covers non-substantive office action refusals, as well as providing our services as Attorney of Record and Domestic Representative. We charge for additional classes when there are complicated lists of goods and services requiring amendments. Our flat-fee rate does not include oppositions, cancellations, or litigation involving third parties.
We will, without charge, review any USPTO Office Action refusing registration of a U.S. designation under the Madrid Protocol, and offer our recommendations on how to proceed. If you want us to review an Office Action that you received, you only need to email us with the US Serial Number or International Registration Number.
In order to file applications for Maintenance (filed during the sixth year of the initial term) and Renewal (filed every ten years), we need the following information:
- The registration number of the mark;
- A specimen (evidence) showing use of the mark for at least one of the goods and services in each class of the registration;
- Whether there is an ownership change, and if so, the new owner’s legal name, place of formation or citizenship, and legal address. In the event of change of ownership, an assignment will have to be filed prior to filing the maintenance or renewal; and
- For Maintenance applications, confirmation that the mark has been in continuous use for at least five years from the registration date.
Typically, when a registered mark has been in continuous use for at least five years from the registration date, a combined affidavit of use and incontestability may be filed together, thereby conferring additional rights in the mark.
In order to file maintenance and renewal applications, the registrant must provide specimens showing use of the mark (a) as registered, and (b) as actually used for the goods and services.
Please also note that the USPTO conducts regular audits of maintenance and renewal applications, and sometimes require the registrant to submit specimens showing use on some — and sometimes all — for the goods and services listed in the registration. It is essential that you tell us before any maintenance or renewal applications are filed if you are not using the mark in connection with all of the goods and services in your registration.
All United States designations under the Madrid Protocol must file renewals with WIPO and Section 71 affidavits of use in the USPTO (filed during the sixth year of the first term of the registration and every ten years from the time of renewal).
For these filings, we will need: the registration number (or international registration number) for the mark and a specimen showing use of the mark in United States commerce for at least one of the goods and services in each class of the registration. All changes of ownership for Madrid registrations are done through WIPO.
To prepare and file an assignment, change of name, merger, etc. the following information is required:
- For assignments, the Assignor’s (or Seller’s) and Assignee’s (or Buyer’s) full legal names, place of formation or citizenship, and legal addresses. Also, if known, the names of the persons who will sign on behalf of the Assignor and Assignee, and such persons’ official titles.
- For all changes (including assignments), the properties that are involved (e.g., the registration numbers or application serial numbers of the marks);
- The date of the transaction, if different from the date of signing; and
- Any other information that may be relevant to our understanding the requested changes.
For name changes, we will need a copy of government documents effectuating the name change, showing the name before and after, as recorded in the official records.
If you have any questions about the proper documentation, please email us.
Regarding our rates for recordation of title changes, if there are many properties to be assigned, we will discount accordingly. We do not need original signed documents. A PDF or scanned image will suffice for filing purposes. We recommend that a “short form” assignment is filed at the USPTO rather than a document memorializing the full transaction. Recordations can be turned around very quickly, often in one day.