US trademark work, attorney-direct.
Clearance, registration, enforcement.
Three doors. Clearance before you file or build the brand. Registration to get the mark on the federal register and through the office-action obstacle course, including intent-to-use and foreign-owner situations. Enforcement when someone else is using your mark or a confusingly similar one. Flat-fee work from a California-licensed attorney, 15+ years.
Ask my AI Legal Analyst about US trademark filing?
Tap a question for an instant, free answer (no email needed), or describe your situation and the analyst routes you to the right next step. I do not review documents for free; work begins after engagement.
Common questions, always free
Where you are in the trademark lifecycle
The right service depends on whether you are still naming, already filing, or already in a dispute. Pick the door that matches your situation. Tap a card for what is included.
Clearance Opinion
Independent USPTO sweep, common-law screen, and a written likelihood-of-confusion opinion with a risk grade and a recommended path.
Tap for what is included ↻- Independent USPTO TESS sweep
- State and common-law screen
- Likelihood-of-confusion analysis on every meaningful hit
- Written opinion with risk grade
- Recommended path: file, narrow, pivot, coexist
USPTO Registration
Application drafting and filing under Section 1(a), 1(b), 44, or 66(a), goods/services tuning, and Statement of Use for intent-to-use marks.
Tap for what is included ↻- Application drafting and filing (Section 1(a) or 1(b))
- Goods/services description tuning
- Response to non-substantive office actions included
- Statement of Use (for ITU applications)
- Registration certificate and renewal calendar
Infringement Demand Letter
Likelihood-of-confusion analysis, an attorney-letterhead demand sent by certified mail, and an optional court-ready draft pleading as leverage.
Tap for what is included ↻- Likelihood-of-confusion analysis
- Attorney-letterhead demand
- USPS certified mail with signature requested
- Optional draft Lanham Act complaint or TTAB Notice of Opposition
- Review of the first substantive response with a next-step recommendation
Foreign company or US affiliate filing?
A US application can be filed by a US company, by a foreign company directly, or as a Madrid Protocol Section 66(a) extension of an existing foreign registration. The hard question is usually not whether you can file, but who should be named as the owner. The applicant has to be the entity that actually owns or controls the mark and the related goodwill and, for an intent-to-use filing, has a bona fide intent to use the mark in US commerce.
Direct US application by the US entity
The US operating or holding company files directly under Section 1(b) intent-to-use (or 1(a) if it is already using the mark). Cleanest when the US entity is the one that will use and control the mark in US commerce, and gives full flexibility to tailor the goods/services to US practice.
Assignment or license between EU owner and US company
The EU owner remains the trademark owner and licenses the US entity, or formally assigns the mark and goodwill to the US entity before or around filing. Useful when the EU group wants to keep title centralized, but the license or assignment terms and the goodwill transfer have to actually support the chosen US applicant.
Madrid designation through the existing foreign owner
The existing foreign registration is extended to the US under Section 66(a) with the foreign owner as the applicant. Can be efficient, but the US filing stays tied to that foreign owner and to the goods/services in the basic registration. If the US commercial owner is a different affiliate, this can create an ownership mismatch.
Parallel structure
In some groups a combination makes sense, for example a Madrid designation for the core mark plus a tailored direct US application for additional classes or for descriptions that US examiners scrutinize. This is a judgment call that depends on the group structure and the goods/services involved.
Direct US filing vs Madrid Protocol
Both routes can lead to a US registration. They differ on who is named as applicant, how much you can tailor the US goods/services, the fee structure, and how dependent the US filing is on a foreign registration. Neither is automatically better; the right answer depends on which entity owns the mark and how much the US identification needs tailoring.
| Issue | Direct USPTO filing | Madrid 66(a) US designation |
|---|---|---|
| Applicant / entity control | Filed by the US entity (or a foreign entity directly). Lets you name the entity that will actually use and control the mark in the US. | Filed by the existing foreign owner of the basic registration. The US filing stays tied to that owner unless the international registration is assigned. |
| Goods / services flexibility | Full flexibility to draft the identification to US practice, including narrowing or adding wording before filing. | Generally limited to the scope of the basic registration. The US designation cannot be broader than what the home registration covers. |
| USPTO fee structure | $350 per class base, plus a $200 per class surcharge for free-form custom identifications and a $100 per class surcharge for insufficient information. | $600 per class for the US designation. Charged through WIPO as part of the international application. |
| Ability to amend the US identification | You can narrow the identification during US prosecution in the usual way. | You can narrow during US prosecution, but you cannot expand beyond the basic registration, which can be a constraint if the home wording is narrow. |
| Dependency on the foreign basic registration | None. A direct US application stands on its own. | Dependent on the basic registration for five years. If the home registration is cancelled or limited in that window (central attack), the US designation can fall with it, subject to transformation rights. |
| Best use case | The US entity is the right owner, or the US goods/services need real tailoring, or you want independence from the foreign registration. | The foreign owner is the correct applicant, the goods/services line up with the home registration, and the group wants centralized international management. |
| Key risk | Higher per-class US attorney and government fees if you file many classes directly. | Ownership mismatch if the US commercial owner is a different affiliate, plus central-attack exposure for five years. |
USPTO government fees shown are current as of January 2025 and are subject to USPTO change. They are paid to the USPTO at cost and are separate from the attorney fee.
Fixed attorney fees by stage
USPTO prosecution runs over many months, and the later events, office actions, publication, opposition, notice of allowance, and Statement of Use, depend on USPTO timing and on third parties. I do not bundle all of that into one speculative 18-month flat fee. Instead I quote each milestone separately, you only pay for a stage if it is actually reached, and USPTO government fees are paid upfront at cost on top of the attorney fee.
| Stage | Attorney fee | When it applies |
|---|---|---|
| Limited US clearance / filing risk screen | $1,250 flat | One mark, up to two classes. Recommended before filing; optional if you knowingly accept the risk. |
| US direct USPTO application | $750 / class | Per class, plus USPTO filing fees paid upfront at cost. Section 1(a), 1(b), or 44. |
| Substantive office action response | from $850 | Separately quoted by complexity, and only if the USPTO actually issues a substantive refusal. |
| Statement of Use / ITU follow-up | $350 / class | Per class, plus USPTO fees, when your real-world use in US commerce begins. |
| Extensions of time to file the SOU | scoped if needed | Handled separately if use has not begun by the deadline. |
| Madrid / US-designation review | scoped separately | Reviewed and quoted based on the basic registration and the goods/services involved. |
USPTO government fees (pass-through, at cost)
These are paid to the USPTO, not to me. They are added at cost on top of the attorney fee. The amounts below are current as of January 2025 and are subject to USPTO change.
| USPTO fee | Amount | Notes |
|---|---|---|
| Base application (Trademark Center base option, Sections 1 / 44) | $350 / class | Electronic application. |
| Surcharge: free-form / custom identification of goods/services | +$200 / class | Likely for wording such as "holding company services." |
| Surcharge: insufficient information in the application | +$100 / class | Avoidable with a complete filing. |
| Madrid Protocol Section 66(a) US designation | $600 / class | Charged through WIPO. |
| Statement of Use | $150 / class | Filed after the Notice of Allowance, once use begins. |
| Request for 6-month SOU extension | $125 / class | If use has not begun by the deadline. |
Intent-to-use timeline?
A Section 1(b) intent-to-use application lets a US entity file before it has started using the mark in US commerce. The tradeoff is a longer path: you have to prove actual use with a Statement of Use before the mark registers. Here is the usual sequence.
Strategy and goods/services tuning
Confirm the right applicant, the filing basis, and a goods/services description that fits US practice and avoids unnecessary surcharge or examiner scrutiny.
USPTO filing
File the Section 1(b) application. The USPTO assigns a serial number and queues it for examination.
Examination / first action
An examining attorney reviews the application several months after filing and either approves it or issues an office action.
Publication or office action
If approved, the mark publishes for opposition. If not, you respond to the office action first. A substantive refusal is separately scoped.
Notice of Allowance
For an intent-to-use mark that clears publication, the USPTO issues a Notice of Allowance. This is not yet a registration.
Statement of Use when use begins
Once you actually use the mark in US commerce, you file the Statement of Use with a specimen. If use has not begun, you request a six-month extension.
Registration
After the USPTO accepts the Statement of Use, the mark registers and the renewal calendar starts.
Clearance is worth considering, even if you already searched the USPTO
Clearance is recommended, not mandatory. You can file without it, and that can be a reasonable choice if you understand and knowingly accept the risk. The point is to make that decision with eyes open, because an attorney clearance opinion is not the same thing as a raw USPTO export.
Hits, not analysis
A self-run knockout search in the USPTO database tells you what exists. It does not tell you which results are legally meaningful, because likelihood of confusion turns on the relationship between the marks, the goods/services, and the channels of trade, not on an exact-string match.
Likelihood-of-confusion judgment
An attorney opinion weighs similar marks in adjacent classes, pending applications, and common-law uses that never appear in a registration search, then grades the real risk and recommends whether to file, narrow, pivot, or seek coexistence.
Not sure which door?
Quick decision tree. Pick the row that matches your situation.
Where you are
FAQ
Which trademark service do I need first?
Start with a clearance opinion BEFORE you file the application or build marketing around the name. The cost of clearance ($1,250) is much lower than the cost of an abandoned application, a forced rebrand after launch, or a cease-and-desist from a senior user. If you already filed and got an office action, that is a separate scope (registration / prosecution). If a third party is using your mark, that is enforcement (infringement demand letter).
Can a US company file if an affiliated foreign company owns the EU registration?
Sometimes, but it is not automatic. The US applicant must be the entity that actually owns or controls the mark and the related goodwill and, for an intent-to-use filing, has a bona fide intent to use the mark in US commerce. Two affiliated companies that share the same ultimate owners are still separate legal entities; common ownership does not by itself make the US affiliate the correct trademark owner. Usual options are a direct US application by the entity that will use the mark, an assignment or license between the EU owner and the US company, or a Madrid Protocol designation filed through the existing foreign owner.
Should I file directly with the USPTO or through the Madrid Protocol?
It depends on who owns the mark and how tailored the US goods/services description needs to be. A direct US application is filed by the US entity, gives the most flexibility to tailor the identification, and does not depend on a foreign basic registration. A Madrid Section 66(a) designation extends an existing foreign registration to the US, can be efficient when the foreign owner is the right applicant, but stays tied to that owner, can be limited by the goods/services in the basic registration, and remains dependent on it for five years. Madrid is not automatically better if the US commercial owner is a different affiliate or the US identification needs heavy tailoring.
What is the difference between Section 1(b), 44, and 66(a)?
Section 1(b) is an intent-to-use filing by a US or foreign applicant that has a bona fide intent to use the mark in US commerce but has not started yet; you prove use later with a Statement of Use. Section 44 lets a foreign applicant rely on a foreign application or registration as a basis, without proving US use before registration in the same way. Section 66(a) is a Madrid Protocol request to extend an international registration to the US. Which basis fits depends on whether you are already using the mark, whether you own a foreign registration, and which entity should be the applicant.
Can I file before I have used the mark in the US?
Yes, through a Section 1(b) intent-to-use application, as long as you have a bona fide intent to use the mark in US commerce. The mark will not register until you actually use it and file a Statement of Use after the Notice of Allowance. If you are already using the mark in US commerce, you can instead file under Section 1(a) and submit a specimen with the application.
Are USPTO fees included in the attorney fee?
No. USPTO government fees are separate and are paid upfront at cost, in addition to the attorney fee. As of January 2025 the base application fee is $350 per class for an electronic application using the Trademark Center base option, with a $200 per class surcharge for a free-form custom identification of goods and services and a $100 per class surcharge for an application missing required information. A Madrid Section 66(a) US designation is $600 per class, a Statement of Use is $150 per class, and a six-month extension is $125 per class. These are current USPTO fees and are subject to USPTO change.
Why are office actions separately scoped?
Because they may never happen, and when they do they vary enormously in difficulty. Many applications are approved without a substantive refusal. Others draw a likelihood-of-confusion refusal, a descriptiveness refusal, or an identification objection that takes real legal work to overcome. Rather than load every application with a speculative office-action fee, I include responses to non-substantive examiner requests in the registration fee and quote a substantive office action response separately (from $850), and only if one is actually issued.
Why is the Statement of Use a later milestone?
In an intent-to-use application the Statement of Use is filed after the Notice of Allowance and after you have actually started using the mark in US commerce. Because that depends on when your real-world use begins, which can be months after filing, it is a separate later step rather than part of the original application. It carries its own USPTO fee ($150 per class) and its own attorney fee ($350 per class).
What if the USPTO search shows dead exact marks?
Dead or abandoned marks are usually less blocking than live registrations, because an examiner generally does not cite a dead mark as a bar to registration. They are not automatically irrelevant, though. A dead exact mark can still reveal a prior user who may retain common-law rights, marketplace history, or the reason an earlier application failed in a way that could also affect yours. A clearance opinion weighs dead marks together with live registrations, pending applications, and common-law uses rather than treating any one result as decisive.
Do holding-company services belong in Class 35 or 36?
It depends on what the entity actually does. Holding-company and business-management services are often classified in Class 35, and financial or investment services in Class 36, but the USPTO scrutinizes vague "holding company" wording and a free-form custom description triggers a $200 per class surcharge. Before adding those classes I look at whether they reflect real services the entity offers in US commerce or whether they only add cost and examiner risk without protecting anything you actually use.
Should I file multiple classes now and narrow later?
Sometimes, but more classes mean more government fees, more attorney fees per class, and more surface area for refusals. You generally cannot expand a US application beyond what you file (and a Madrid designation cannot exceed the basic registration), but you can narrow during prosecution. The practical question is which classes reflect goods or services you actually use or have a bona fide intent to use, rather than filing broadly for its own sake. I would rather scope the classes to what you can support than pad the filing.
Are you a USPTO-registered attorney?
Any active member of a US state bar is qualified to represent applicants before the USPTO under 37 C.F.R. § 11.14. I am an active member of the California Bar (CA Bar #279869, licensed since 2011). The USPTO does not require a separate "trademark attorney" license; state bar admission is the qualification.
Do you work with non-California and foreign clients?
Yes. US trademark practice is federal. The Lanham Act and USPTO rules apply identically across all 50 states, so the work is the same whether you are in California, elsewhere in the US, or abroad. International trademarks involve separate national registries (EUIPO, UKIPO, JPO, and others); I handle the US side and can coordinate foreign-associate counsel for other countries. Common-law and state-law questions can have state-specific elements; I will flag those and address them or coordinate local counsel where needed.