U.S. Trademark Counsel for Foreign Applicants — Clear Process & Flat Fees

USPTO Trademark Filings Require a Licensed U.S. Attorney.

If you are domiciled outside the U.S., the United States Patent and Trademark Office (USPTO) requires that your trademark application and all communications with the USPTO be handled by a U.S. licensed attorney. The same applies to matters filed before the Trademark Trial and Appeal Board (TTAB).

A foreign domiciled applicant, registrant, or party includes those who do not have a domicile in the U.S. or its territories. A domicile is the place an individual resides or an entity’s principal place of business.

This rule aims to: (1) increase compliance with U.S. trademark law and USPTO regulations; (2) improve the accuracy of trademark submissions; and (3) protect against fraud.

Attempting to file without proper representation can lead to:

• Rejection or abandonment of the application,
• Missed deadlines and loss of filing fees, and
• Delays in registration.

Ask IP Law acts as your authorized U.S. trademark counsel and represents you directly before the USPTO. You communicate with a U.S. trademark attorney—Aileen Shepherd Kell—not a filing service or intermediary. We do not outsource this legal work.

Our services include:

• Trademark clearance search and evaluation,
• Preparation and filing of U.S. trademark applications,
• Preparation and filing of Statements of Use and Requests for Extension,
• Responses to USPTO Office Actions,
• Ongoing case monitoring and status updates,
• Preparation and filing of maintenance documents,
• Petitions to Cancel before the TTAB, and
• Oppositions before the TTAB.

We work with clients worldwide and regularly assist:

• Foreign companies expanding into the U.S.,
• International ecommerce sellers,
• Software and technology companies, and
• Foreign trademark agents requiring U.S. counsel.

Overview of the Trademark Process

1. Engagement: If you request Ask IP Law’s services, you will receive an Engagement Letter & Trust Request (fee retainer) to initiate the attorney-client relationship.
2. Initial Trademark Review: After completing Step 1, a review of your mark, goods/services, and filing strategy is conducted.
3. Search & Risk Assessment: A trademark search is not required, but it is HIGHLY recommended. The search will help you determine whether you should modify or change your mark (if needed) to: (1) minimize the chances of a “likelihood of confusion” refusal by the USPTO, (2) the costs of responding to an office action, and/or (3) the costs of defending an infringement claim. Assuming the client elects a search option, the search will be completed, and a report with recommendations will be provided to the client.
4. USPTO Filing: We prepare and file your application in compliance with U.S. law.
5. USPTO Examination & Response: If issues arise, we correspond directly with the USPTO on your behalf.
6. Registration & Monitoring: We guide you through registration and post-filing obligations.

Our Timeline

After the client has provided all necessary information requested by Ask IP Law, a trademark search and an application can be completed within 2 business days. This timeframe is assuming that the trademark search did not present any conflicts that may require the client to reconsider its branding before filing.

Transparent Fees for Foreign Applicants

• We offer flat fee pricing for trademark searches and filings.
• The USPTO filing fees are explained in advance.
• There are no hidden charges for routine updates.

Below is an overview of our flat fees and the USPTO filing fees. A detailed quote will be tailored to each individual client’s needs. The fees below are the same rates we charge U.S. trademark applicants. There is no markup for foreign applicants.

Flat Rate Attorney Fees for Clients that Initiate the Trademark Process with Ask IP Law.

*Trademark Search Options:

• Option 1 is limited to the USPTO database. A USPTO Examiner will only look for conflicting marks on the USPTO database. This search aims to find any conflicting marks that an Examiner may identify during the prosecution of a trademark application.
• Option 2 expands the search beyond the USPTO database to evaluate trademarks that may be in use but have not been filed on the USPTO database. The reason the comprehensive search is offered is because in the U.S., common law rights can be asserted by the first user of a mark even without a registration. Therefore, conducting a common law search will help you identify and avoid possible infringement claims for marks that you would not find on the USPTO database.

**Intent-to-Use Applications:

• If an application is filed on an intent-to-use basis, meaning that you have not yet started using the mark in connection with goods/services in U.S. commerce, there will be minor additional fees associated with these applications. However, these fees do not occur until ~ 1 year after filing the application. The additional fees associated with an intent-to-use application are the Statement of Use and Request for Extension fees listed above (attorney fees) and below (USPTO filing fees). 
• Please do not let these minor additional costs deter you from filing a trademark application before you start using the mark. It is in your best interest to file the mark prior to launching to put the public on notice of your intent to use the mark. Applications filed with the USPTO are reviewed in the order in which they were filed, therefore, if someone else files an application for the same or similar mark before you, it could cause a potential conflict with your application.

Flat Rate Attorney Fees for Clients that Transition to Ask IP Law.

If you did not file your initial application with us, but want to transition to our firm, we are happy to assist. However, please note that the attorney fees for the Statement of Use and Request for Extension services will be increased. All other fees remain the same. Why? Because we will need to review your application from scratch to check that everything was filed correctly and counsel you as we would for a new client starting the application process. This takes us more time to process these filings than it would for an existing client. Therefore, our fees reflect this additional time.

USPTO Fees

What You Need to Know About U.S. Trademarks.

In the United States, trademark rights are based on use. Therefore, you will not obtain rights in a trademark until you start using it in commerce. Many other countries operate on a first to file basis.

Does this mean that you should not file a USPTO trademark application until you start using the mark in commerce? No. It’s in your best interest to conduct a search to evaluate any potential conflicts and/or infringement issues prior to launching. After a trademark search is cleared, you can file an application before you have started using the trademark. The application will be filed on an intent-to-use basis, meaning you have not started using the mark yet in commerce, but have a good faith intention to do so. This puts the public on notice of your intent to use the trademark and initiates the application review process with the USPTO.

If someone is using a trademark, but has not filed a trademark application with the USPTO, do they have trademark rights? Yes, assuming they are the first user of the trademark. This is referred to as common law rights, which can be asserted by the first user of a mark even without a registration. Common law rights, however, are limited by their geographic scope of use, whereas marks registered with the USPTO obtain nationwide protection. 

If the U.S. has common law rights, why should I file an application with the USPTO? Trademark registration with the USPTO provides numerous benefits, including:

• A legal presumption that you are the owner of the mark and have the exclusive right to use the mark nationwide.
• Prevents registration of identical or confusingly similar marks used in connection with related goods or services.
• Use of the ® symbol to put the public on notice that your mark is federally registered.
• Ability to file a lawsuit concerning your mark in federal court.
• A federally registered trademark can be recorded with the U.S. Customs and Border Protection to block infringing products from entering U.S. commerce.
• If you want to enroll in Amazon Brand Registry, you must have a pending federal trademark application or registered trademark.

Frequently Asked Questions

1. Can I start using my trademark if it has not been registered yet?

   You can, and you must. As explained above, trademark rights in the United States are based on use. Therefore, your application will never proceed to registration until you start using it in U.S. commerce and provide evidence of use.

2. Can I use trademark symbols in connection with my trademark before it is registered?

   You can, and should, use the ^TM symbol in connection with your trademark to put the public on notice that you are using it as a trademark. You are NOT allowed to use the ® symbol or “registered trademark” until your mark has been registered by the USPTO. After your mark registers, you can either continue using the ^TM symbol or transition to the ® symbol.

3. How long does the USPTO take to process my application?

   Currently, it takes about 5 months from the date of filing for an application to be assigned to a USPTO examining attorney. From there, timelines vary depending on multiple factors. For a more detailed explanation, you can visit this article.

4. Can you take over my application if I filed through the Madrid Protocol?

   Yes, we can assist as your U.S. trademark counsel.

5. Can you take over my application if I filed the application through another firm or attorney?

   Yes, we can take over representation and communicate with the USPTO on your behalf.

6. How do I use my trademark in connection with apparel?

   This is a common source of confusion for both U.S. and foreign applicants. Please see this article.

7. Do you assist with Amazon Brand Registry?

   Yes, you can file a trademark through Ask IP Law and we will assist with the approval process for Amazon Brand Registry. For more information, you can visit this article.

ASK IP LAW’s website, including all blogs or articles, constitutes attorney advertising, and is educational and journalistic expression not intended as legal advice. If you need advice regarding your legal matters, please contact ASK IP LAW.