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(540)U.S. trademark filing and prosecution

We file and prosecute U.S. trademark applications for foreign and U.S. applicants, and answer the refusals that stand between a mark and registration.

Send a new matterWhat to send us
40424446 FIG. 1

What we handle

Applications
Use-based, intent-to-use, and foreign-basis applications, with identifications written to survive examination.
Refusals
Responses to likelihood-of-confusion, descriptiveness, specimen, and identification refusals.
Madrid Protocol extensions
U.S. counsel for responding to USPTO office actions on international registrations designating the U.S.
Statements of use and extensions
Intent-to-use applications carried through to registration.
Maintenance
Declarations of use and renewals that keep a registration alive.
Opposition-stage matters
Extensions of time to oppose and early discussions with the other side.

What to send us

Everything we need to open the matter in one email. Hold back confidential technical detail until we confirm the conflict check and engagement.

Build the email
  • The mark, and any logo or design file
  • The goods and services, and the classes you expect
  • The applicant name, address, and entity type
  • The filing basis: use in the U.S., intent to use, or a foreign application or registration
  • For use-based filings, the first use dates and a specimen

How the matter runs

The same five steps on every matter, reported to you at each one.

  1. Instruction received

    The mark, goods, and filing basis.

  2. Conflict check and engagement

    Confirmed before we file.

  3. Filing

    Filed with an identification built to pass examination.

  4. Examination

    Refusals reported with options and answered on your instruction.

  5. Registration

    Registration and the maintenance dates reported to you.

Questions firms ask

Does a foreign applicant need a U.S. attorney?

Yes. Since August 3, 2019, applicants and registrants domiciled outside the United States must be represented before the USPTO by an attorney licensed in a U.S. state (37 C.F.R. 2.11).

Can you respond to an office action on a Madrid extension to the U.S.?

Yes. Once the USPTO issues an action on an international registration designating the U.S., we can enter the case and respond.

Can I file based on my home-country application?

Yes. A foreign application or registration can support a U.S. filing under Section 44, with priority if filed within six months of the foreign application.

Do you search before filing?

We review the register for conflicting marks before we file, so a refusal does not come as a surprise.

Ready to send the matter?

Email the number, the deadline, and the parties. We reply with the conflict check and the engagement terms.

Email ck@ckiplaw.com
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