Ask my AI Legal Analyst about your trademark filing?
Tap a question below for an instant, free answer (no email needed), or describe your own mark and goods/services and the analyst routes you to the right next step. Answers cover direct vs Madrid filing, intent-to-use, foreign-affiliate ownership, USPTO fees, office actions, and the Statement of Use.
Common filing questions, always free
Fixed fees by stage, not one 18-month bundle.
USPTO prosecution runs many months, and future events (office actions, publication, opposition, notice of allowance, Statement of Use) depend on USPTO timing and third parties. So I quote attorney fees by milestone, and the USPTO government fees are paid upfront at cost as a pass-through. You pay for the next stage when it actually happens, not for events that may never occur.
- Attorney search of live and dead USPTO records
- Likelihood-of-confusion read on close marks
- Adjacent-class and common-law flags
- Go / adjust / reconsider recommendation
- Application drafting and entity / ownership setup
- Goods/services description tuning
- Specimen review (for 1(a) filings)
- e-filing through Trademark Center
- Non-substantive office action responses
- Registration certificate handling
- Renewal calendar setup
- Review of the office action and cited references
- DuPont factor analysis
- Argument distinguishing the cited mark
- Goods/services amendments if useful
- Evidence assembly (third-party use, dictionary, market data)
- e-filed response
- Specimen review
- SOU drafting and filing
- Specimen-refusal response (if the examiner rejects the specimen)
- Registration certificate
- Review of the basic mark and existing identification
- Owner / control analysis for the US designation
- Direct-vs-Madrid recommendation for your facts
- Extension request drafting and filing
- Deadline tracking
- Quoted when the need arises
USPTO government fees are separate from my attorney fee, paid upfront at cost, and current as of January 2025 but subject to USPTO change. Base application is $350 per class. Add $200 per class if the application uses free-form or custom identification of goods/services (likely for holding-company style wording), and $100 per class if the application has insufficient information. Madrid Section 66(a) US designation is $600 per class. Statement of Use is $150 per class; a six-month SOU extension is $125 per class.
The intent-to-use (Section 1(b)) timeline.
Section 1(b) lets you file before you are using the mark, claiming a priority date now and proving use later. Here is the path from strategy to registration. A clean ITU filing can still take many months to allowance, and often 18 to 24 months to registration, depending on when your real-world use begins.
Strategy and goods/services tuning
I confirm the right owner, the right filing basis (1(a), 1(b), 44, or 66(a)), and the classes that match your real intended use. I tune the goods/services wording with you before anything is filed.
USPTO filing
After you approve the draft, I e-file through Trademark Center. You get the USPTO serial number the same day. Priority date is set.
Examination and first action
An examiner is assigned and issues either an approval for publication or an office action. Non-substantive office actions are included in the $750. Substantive refusals are quoted separately.
Publication or office action
If approved, the mark publishes in the Official Gazette for a 30-day opposition window. If an office action issued instead, I respond and then proceed.
Notice of Allowance
On a 1(b) application, once it clears publication with no opposition, the USPTO issues a Notice of Allowance. The mark is allowed but not yet registered, because you have not shown use.
Statement of Use
When you are actually using the mark in commerce, you file a Statement of Use with a specimen. If use is not ready, you can buy time with six-month extensions of time to file the SOU.
Registration
The USPTO issues the registration certificate. I send it to you and set up the renewal calendar (Section 8 affidavit at years 5 to 6, Section 9 renewal at years 9 to 10).
Section 1(a) is shorter
If you are already using the mark, a Section 1(a) use-based application skips the Notice of Allowance and Statement of Use steps. Total time to registration on a clean 1(a) filing is typically around 10 to 14 months. The ITU path above is longer because it waits for your real-world use.
Direct US filing vs Madrid Protocol.
If you already hold a foreign registration, you can extend it to the US through the Madrid Protocol (a Section 66(a) US designation) instead of filing a fresh US application. Madrid can be efficient, but it is not automatically the better choice. The right answer depends on which entity is the real US commercial owner and how much the US identification needs tailoring.
| Issue | Direct USPTO filing | Madrid 66(a) US designation |
|---|---|---|
| Applicant / entity control | You choose the exact US owner. A US operating or holding company can be the applicant if it has bona fide intent and control of the mark. | The US designation flows from the existing international registration holder. If the US commercial owner is a different affiliate, this can create an ownership mismatch. |
| Goods/services flexibility | Full flexibility to draft a US-tailored identification, including breaking out or narrowing classes for the US market. | The US identification generally tracks the international registration and cannot exceed it. Less room to tailor wording for US examiner practice. |
| USPTO fee structure | $350 per class base, plus $200 per class for free-form identification and $100 per class for insufficient information, where applicable. Current, subject to USPTO change. | $600 per class for the US designation. Current, subject to USPTO change. |
| Amending the US identification | Straightforward to amend or narrow the US application during prosecution to satisfy the examiner. | Harder. Amendments are constrained by the international registration, which can make office-action responses more awkward. |
| Dependency on the foreign basic registration | Independent. A US direct application stands on its own once filed. | Dependent for five years (central attack). If the foreign basic registration is cancelled within that window, the US designation can fall with it, though transformation may be available. |
| Best use case | The US affiliate is the real US owner, or the US identification needs tailoring, or you want independence from the foreign mark. | The foreign owner is also the US owner, the existing identification works, and you are extending into several countries at once. |
| Key risk | Pay the per-class fee at filing for every class included; broad filings cost more upfront. | Ownership mismatch if the US affiliate differs from the foreign holder; five-year dependency; limited US tailoring. |
Madrid is not always the efficient choice
A Section 66(a) designation is genuinely efficient when the foreign owner is the US owner and the identification works as-is. If the US commercial owner is a different affiliate, or the US identification needs real tailoring, a direct US filing is often cleaner despite the extra paperwork. I look at the actual entity structure before recommending a route.
Filing when a foreign company owns the mark.
A US application can be filed by a US company, a foreign company, or through a Madrid 66(a) designation. But the applicant must be the entity with a bona fide intent to use the mark in US commerce and control of the mark and its goodwill. Shared ownership is not enough on its own.
Same owners do not make two companies interchangeable
Having the same ultimate beneficial owners (the same UBOs) behind both the EU owner and the US affiliate does not make them interchangeable for trademark ownership. The application has to be filed in the name of the entity that actually owns or controls the mark for US purposes. Filing in the wrong name can render the application void, so the owner question is settled before filing, not after.
Direct US application by the US company
The US operating or holding company files directly, as the owner with bona fide intent to use the mark in US commerce. Clean when the US entity is genuinely the one using and controlling the mark here.
Assignment or license between EU owner and US company
The EU owner assigns the US rights to the US company, or licenses the mark to it with quality control. The paperwork has to match who actually owns and controls the goodwill.
Madrid designation through the foreign owner
The existing foreign owner extends its international registration into the US under Section 66(a). Efficient if the foreign owner is also the US owner; risky if the US affiliate is the real commercial owner.
Parallel filings
A combination, for example a direct US filing by the US company plus coordination with the foreign portfolio. Sometimes the cleanest answer when ownership and control are split across entities.
Holding-company services (Classes 35 / 36): test whether you need them
Holding-company, business-management, and certain financial services can fall in Classes 35 and 36, but each added class is another per-class USPTO fee plus another $750 attorney fee, and custom or free-form wording for those services triggers the $200 per-class USPTO surcharge. If the real commercial activity is in a core class, filing extra holding-company classes you do not actually need adds cost without adding protection. I test that before padding the application.
Clearance is still worth considering, even if you have already searched.
Some clients arrive having already run a USPTO search and say no clearance is needed. That can be a reasonable position if you knowingly accept the risk. It is worth understanding the tradeoff before you decide.
An attorney clearance opinion is different from a raw USPTO export
A raw database search shows hits, but it does not run the analysis. A clearance opinion looks at what a raw export leaves unresolved: dead exact marks that may still reveal a prior user or marketplace history, similar marks in adjacent classes, and common-law uses that never appear in the register at all. The likelihood-of-confusion question is a legal analysis, not a database listing.
Filing without clearance may be perfectly acceptable if you knowingly assume the risk. The tradeoff is that the USPTO does not pre-clear your mark: you learn about prior-user problems through the office-action process, after you have already paid the filing fee, picked a launch date, and started building marketing. The decision is yours; I will tell you plainly what each path risks.
A typical foreign-affiliate filing puzzle.
EU-registered rental mark, new US affiliate
Example: a foreign group owns an EU registration for a construction-equipment rental mark and wants to file in the US through a newly formed US affiliate. The core activity sits in Class 37 (rental of construction equipment), with Classes 35 and 36 raised because of holding-company services, and the Madrid Protocol mentioned as an alternative route.
The first questions are not only availability. They are:
- Who should own the US application, the EU parent or the new US affiliate?
- Does the US affiliate actually have a bona fide intent to use the mark in US commerce?
- Are the Class 35 and 36 holding-company descriptions truly needed, or do they just add per-class fees and examiner scrutiny?
- Would a Madrid 66(a) designation through the EU owner create an ownership mismatch with the US affiliate that is really the commercial user?
None of these are answered by a search export. They are answered by sorting out ownership, intent, class scope, and filing route before anything goes to the USPTO. That is the work that keeps the application from being filed in the wrong name or padded with classes that do not earn their fee.
How a filing works.
Intake and ownership
You send me the mark, the goods or services, any specimen, your entity information, and any foreign registration. I settle who owns the US application with you.
Tap for the detail ↻What I confirm first
The correct owner, the right filing basis (1(a), 1(b), 44, or 66(a)), and the classes that match real intended use. This is where ownership mismatches and unnecessary classes get caught.
Tap to flip back ↻Draft and approve
I draft the application and the goods/services identification and send it to you for review. You approve before anything is filed.
Tap for the detail ↻Why the wording matters
The identification controls scope, examiner risk, and which USPTO surcharges apply. Free-form wording adds $200 per class, so I tune it deliberately rather than padding it.
Tap to flip back ↻File and prosecute
I e-file through Trademark Center and you get the serial number the same day. I handle non-substantive office actions through to publication.
Tap for the detail ↻If a refusal issues
Non-substantive office actions are included. A substantive 2(d) or 2(e) refusal is quoted separately from $850, and only if the USPTO actually issues one. No registration is guaranteed; the examiner has discretion.
Tap to flip back ↻Registration or SOU
A use-based mark proceeds to registration. An intent-to-use mark gets a Notice of Allowance, then registers after the Statement of Use when use begins.
Tap for the detail ↻After registration
I send the certificate and set up the renewal calendar (Section 8 at years 5 to 6, Section 9 at years 9 to 10) so the maintenance deadlines do not lapse.
Tap to flip back ↻When this package is not a fit.
Honest about scope
- You have not done any clearance work and want certainty. Clearance is recommended, not mandatory. If you want the risk read before filing, get a clearance opinion first; if you knowingly accept the risk, I can file without it.
- You need a TTAB opposition or cancellation handled. Inter-partes TTAB practice is litigation. That is a separate engagement; email me with the TTAB case number.
- You need full foreign national filings. US-anchored Madrid filings and Section 44 foreign-priority filings can be scoped here. National foreign filings outside the US require associate counsel in each jurisdiction; I coordinate where useful but cannot file directly abroad.
- You want a guarantee of registration. No attorney can guarantee registration. The USPTO examiner has discretion under Section 2 of the Lanham Act, and third parties can oppose. What I do is file the application correctly, on time, and prosecute it with reasonable diligence.
Frequently asked questions.
Can a US company file if an affiliated foreign company owns the EU registration?
It can, but only if the US company is genuinely the entity with a bona fide intent to use the mark in US commerce and control over the mark and its goodwill. Shared owners (same UBOs) do not make two companies interchangeable for trademark ownership. The application must be filed in the name of the correct owner.
The usual options are: a direct US application by the US operating or holding company; an assignment or license between the EU owner and the US company; a Madrid Protocol designation through the existing foreign owner; or parallel filings. Filing in the wrong name can void the application, so this is decided up front.
Should I file directly with the USPTO or through Madrid?
It depends on which entity is the real US commercial owner and how much you need to tailor the US goods/services identification. A direct US application gives full control over the applicant entity and the US identification, and is not tied to your foreign basic registration. A Madrid Section 66(a) designation can be efficient when the foreign owner is also the US owner and the existing identification works, but it depends on the foreign basic mark for five years and is harder to amend for US examiner requirements.
Madrid is not automatically better. If the US affiliate is a different entity or the US wording needs work, a direct filing is often cleaner. This depends on your specific facts.
What is the difference between Section 1(a), 1(b), 44, and 66(a)?
Section 1(a) is use-based: you are already using the mark in US commerce and file a specimen. Section 1(b) is intent-to-use: you have a bona fide intent to use but are not using yet, so you file a Statement of Use later when use begins. Section 44 lets a foreign applicant rely on a foreign application (44(d) priority) or registration (44(e)) without proving US use at filing. Section 66(a) is a US designation of an international registration under the Madrid Protocol.
Many foreign-owned filings use 1(b) or 44. The right basis depends on the owner, the timing of US use, and the foreign registration.
File before US use begins?
Yes. A Section 1(b) intent-to-use application lets you file before you are using the mark, as long as you have a bona fide intent to use it. You claim a priority date now and prove use later with a Statement of Use, after the USPTO issues a Notice of Allowance. A Section 44 filing based on a foreign registration also does not require proof of US use at filing.
Are the USPTO government fees included in the attorney fee?
No. The attorney fee and the USPTO government fee are separate, and the USPTO fees are paid upfront, at cost, as a pass-through. As of January 2025 the base application is $350 per class, with a $200 per-class surcharge for free-form or custom identification wording and a $100 per-class surcharge for an application with insufficient information.
A Madrid Section 66(a) US designation is $600 per class, a Statement of Use is $150 per class, and a six-month SOU extension is $125 per class. These are current government fees and are subject to USPTO change.
Why are office actions scoped separately from the filing fee?
USPTO prosecution runs many months, and whether an office action issues, and how complex it is, depends on the examiner and on third parties, not on me. Non-substantive office actions (informalities, classification, identification, disclaimer requests) are included in the $750 per-class filing fee.
Substantive refusals, such as a Section 2(d) likelihood-of-confusion refusal or a Section 2(e) descriptiveness refusal, require a separate legal argument and are quoted separately, from $850, by complexity, and only if one is actually issued. Quoting fees by milestone keeps you from prepaying for events that may never happen.
When do I file a Statement of Use, and why is it a later milestone?
On an intent-to-use (Section 1(b)) application, after the mark clears examination and the opposition period, the USPTO issues a Notice of Allowance. You then file a Statement of Use, with a specimen, once you are actually using the mark in commerce. It is a separate later milestone because it depends on when your real-world use begins, which the USPTO does not control.
If use is not ready, you can buy time with six-month extensions of time to file the SOU. My SOU follow-up is $350 per class plus the USPTO fee, handled when use begins.
What if the USPTO search shows dead exact marks?
Dead marks are usually less blocking than live registrations, because a cancelled or abandoned registration is not itself a current bar to your application. They are not irrelevant, though. A dead exact mark can still reveal marketplace history, a prior user who may retain common-law rights, or a pattern the examiner notices.
The right move is to check why the mark went dead and whether anyone is still using it, rather than assuming a dead result means the path is clear.
Do holding-company services belong in Class 35 or 36?
Sometimes, but it is worth testing whether you actually need them. Holding-company and business-management style services can fall in Class 35, and certain financial or capital services in Class 36, but adding classes adds USPTO fees per class and can invite extra examiner scrutiny, and custom or free-form wording for these services triggers the $200 per-class USPTO surcharge.
If the real commercial activity is in the core class, filing extra holding-company classes that you do not need adds cost without adding protection.
File multiple classes now and narrow later?
You can generally delete goods, services, or whole classes from a US application later, but you cannot broaden it beyond what you originally filed, and you pay the government fee per class at filing for every class you include. So filing broadly is not free: each extra class is an additional per-class government fee plus my $750 per-class attorney fee, and unused classes you later abandon are sunk cost.
The better approach is usually to file the classes that match real, intended use, rather than padding the application and trimming it later.
Do I need a clearance opinion before I file?
It is recommended, not mandatory, especially if you have not done any meaningful search. The USPTO will not pre-clear your mark; you find out about prior-user problems through the office-action process after you have paid the filing fee, picked a launch date, and started building marketing. A clearance opinion is different from a raw USPTO export, because it runs the likelihood-of-confusion analysis on the results.
If you knowingly accept the risk, I can file without clearance. See the clearance opinion page.