U.S. Trademark Registration

The brand is probably the most important asset of your company. It is what allows you to differentiate your products or services from those of your competitors. By trademarking your brand, you will obtain an exclusive right to use the trademark in the USA. In addition, you can prevent your competitors or third parties from using it to take advantage of your reputation.

Yes, it is possible to sell your products or services without registering the trademark first. However, this may lead to serious problems in the future. For example, a third party could register a similar trademark and attempt to prevent you from continuing to sell, or a competitor could use your trademark in the market to take advantage of your reputation. In these cases, although you will still have the protection of common law trademarks, you will lose the enormous advantages of having the trademark registered at the federal level.

Our recommendation is always to register the logo and the name separately. By registering the name in standard characters, the protection of the name is much stronger. Additionally, if you only register your logo and change it in the future, you run the risk of losing the protection of your brand name. Our recommendation is always to register the logo and the name separately. By registering the name in standard characters, the protection of the name is much stronger. Additionally, if you only register your logo and change it in the future, you run the risk of losing the protection of your brand name.

In the United States, federal registration coexists with state registrations. State registration protects the trademark only in the specific state, whereas federal registration with the United States Trademark and Patent Office (USPTO) protects the trademark across all of the United States. In general, for companies that sell in more than one state and for all foreign companies offering products in the United States, it is recommended to register the trademark at the federal level.

There are numerous databases where you can check if there are trademarks identical or similar to yours. The United States Patent and Trademark Office (USPTO) itself has the TESS tool (https://tmsearch.uspto.gov) where you can perform a quick search. However, keep in mind that there are many factors to consider when determining if a trademark may conflict with yours. The so-called Dupont factors are used to assess the risk of confusion between two trademarks, such as similarity in appearance, sound, connotation, and commercial impression; similarity of products and services; similarity of trade channels; the conditions under which consumers access the product and service; whether the trademark was known; if there is prior evidence of confusion, among others. Although you may conduct searches on your own, it is always advisable to seek the legal opinion of an attorney. In our firm, we perform a thorough search for potential conflicts, not only in federal databases but also state databases, and even unregistered trademarks (common law trademarks) that may somehow affect the viability of registration or its effects.

Yes, you can use your foreign trademark application or registration as a basis for filing in the US, but this means that the trademark you are applying for in the US cannot cover more (in terms of product descriptions and claims) than the foreign trademark. We recommend that you provide the lawyer with the previous foreign registration or application to evaluate together whether it is convenient to use it, or if it is better to register a new or different trademark.

Many clients ask us this question and the answer is always a resounding yes. Think about how much money you will invest in marketing to make your brand known and how much effort you will put in to make your audience recognize your brand. Imagine that when you finally achieve your goals, you are forced to change the name or logo, stop selling in the United States, or use a different brand in the United States than in other countries, with all the duplicated expenses that entails. The investment in registering a brand is relatively small (<$1.5k) and can save you tens of thousands of dollars and many headaches in the future. This answer is also valid for any foreign company that has aspirations of expansion into the United States, no matter how small.

If you are domiciled in the US, you can file the application yourself on the website of the United States Patent and Trademark Office (USPTO), but if you are domiciled abroad, you must be represented by a licensed attorney in the US. The USPTO strongly recommends that both US residents and foreigners always hire a licensed US attorney who specializes in trademark law. This is because a specialized attorney can provide crucial advice for successfully registering your trademark and enforcing and maintaining the rights that registration confers.

You do not need a US address to register a trademark with the United States Patent and Trademark Office (USPTO). However, you will need a licensed US attorney to represent you at all times before the USPTO.

The registration process usually takes between 9 and 12 months. If there are complications, communications with the USPTO Examining Attorney, or oppositions from third parties, the process may take longer. In any case, the effects of the brand registration are retroactive from the date of application. While the process is ongoing, you can use the trademark.

The registration of your trademark in the United States will be valid as long as you maintain it. In the fifth year, you must file a "Declaration of Use," and between the ninth and tenth years, you can renew it by filing a "Declaration of Use and Application for Renewal." These declarations have relatively low fees.

We only need the applicant's information, details of the brand to be registered, and the list of products or services that the brand should protect. The attorney may also request evidence of use of the brand (website, photographs, etc.). If you are not yet using the brand, you can apply for it based on the intention to use it in the future, in which case you will need to provide the evidence to the attorney once the registration process is complete and the brand is pending approval.

No. You can apply for your trademark even if you are not using it yet, as long as you have a good faith intention to do so in the future. In this case, when the registration process is in its final stage, you will need to submit a Statement of Use or Amendment to Allege Use to complete the registration. Please note that additional fees will be charged by the USPTO in this case.

The trademark conflict and clearance search is a necessary process to evaluate the likelihood of a successful trademark registration. Your Brandnew lawyer will conduct a thorough search for conflicting trademarks in the USPTO database, state databases, as well as other common law trademarks that could potentially harm the effectiveness of your brand in the future. The lawyer will not only search for identical trademarks, as anyone could do, but also for similar or related trademarks registered for similar products, taking into account other factors that could ultimately hinder the registration of your trademark. Once the search is completed, you will receive a written legal opinion from your Brandnew lawyer on the likelihood of successfully registering your trademark.

Of course. You can also request assistance from the attorney to help you in choosing a name in a way that can avoid conflicts.

We are a boutique law firm specialized in trademark law. Our goal is to build a long-term relationship with you, one in which you feel that your brand is in good hands and can focus on what you do best: building and growing your business. Do you want to get to know us? The first consultation is free.

Of course. A licensed lawyer in the United States will represent you before the United States Patent and Trademark Office.

Submit a quote request and we will send you our fees and a projection of the fees you will have to pay. We strive to tailor the budget to the needs of our clients and try to offer flat rates that cover all services in the registration process.

You can schedule an appointment through our website. The first consultation with a lawyer is free and without obligation. You can also email us at any time at info@brandnewlegal.com or call us at +1 (954) 828-2254.

We want to get to know you and understand firsthand how we can help. That's why we offer a free and non-binding initial consultation with one of our lawyers via videoconference for up to 30 minutes. Yes, you read that right, it's free and non-binding. During the consultation, you can ask anything you want about your brand, the process, and any doubts you may have before hiring our services.

A trademark filing company is a company dedicated to helping you complete the online form on the USPTO website. In many cases, they duplicate the USPTO form on their website and charge you for submitting it on your behalf. Many of these companies do not have lawyers and do not offer legal advice. Unfortunately, when problems arise with the registration, these companies distance themselves precisely because they cannot offer legal advice. Therefore, the USPTO recommends hiring a lawyer and not trademark filing companies (https://www.uspto.gov/trademarks/basics/do-i-need-attorney).