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LEGAL SERVICES

U.S. Trademark Strategy

A U.S. trademark registration is what lets you stop counterfeit listings, keep your name on Amazon and prevent a distributor from registering your brand first. For companies based outside the United States it is also a filing that must be made through a U.S.-licensed attorney. We handle clearance, filing, office actions and enforcement for Chinese and other international brands.

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HOW WE HELP

What we look at first

01

Clearance before filing

A search that looks beyond identical marks to similar ones, in the goods and services you actually sell. Filing on an unregistrable mark costs more than the search.

02

The application itself

Filing basis (use in commerce or intent to use), ownership in the right entity, goods and services descriptions that cover what you sell without inviting refusals, and specimens that the USPTO will accept.

03

Office actions and oppositions

Responding to likelihood-of-confusion and descriptiveness refusals, and handling oppositions from third parties who think your mark is too close to theirs.

04

Using the registration

Amazon Brand Registry, customs recordation, takedowns against infringing listings and, where needed, demand letters and enforcement.

OUR APPROACH

How the matter proceeds

01

Review

Understand the brand, the products and where and how you sell.

02

Plan

Clear the mark and decide on classes, basis and ownership.

03

Manage

File, prosecute, and maintain the registration and the records of use that keep it alive.

COMMON QUESTIONS

Common questions

Practical answers to frequently asked questions. Individual circumstances can affect the best course of action.

Does registering a U.S. company protect our name as a trademark?+
No. Company registration and trademark rights are separate systems. You can have one without the other, and someone else can register your company name as their trademark.
Do we need a U.S. attorney to file at the USPTO?+
Yes. Since 2019 the USPTO requires foreign-domiciled applicants and registrants to be represented by an attorney licensed in the United States.
Our distributor registered our brand in the U.S. What can we do?+
It depends on the facts—who used the mark first in the U.S., what the distribution agreement says, and how long ago the registration issued. Cancellation proceedings and negotiation are both possible; the sooner you act, the more options you have.
THE NEXT STEP

Ready when you are.

Briefly describe your legal needs. We offer a complimentary initial consultation and will discuss the next steps with you.

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