Does your international company need a US trademark attorney?

Is an international company required to use a US attorney for US trademark applications?

Yes, the USPTO requires all international companies (i.e., domiciled in a foreign country) to use a US attorney to file or otherwise prosecute trademark applications. This rule applies to Office Action responses, trademark registration renewals and maintenance, and TTAB trademark oppositions and cancellations.

How much does a simple Office Action response cost?

If you are a foreign applicant looking for a US attorney to respond to a trademark Office Action, our firm offers flat rates for both complex and simple Office Action responses. We consider an Office Action to be simple when there are no registration refusals or requested disclaimers against which we need to argue. For such a non-substantive Office Action, our firm currently charges a flat rate of $295 for a simple response.

After filing an Office Action response, our firm’s attorneys would take over as attorneys of record in the trademark application. This would mean that all future correspondences from the USPTO regarding your US trademark application would be sent to our firm. This also means our firm would calendar all future deadlines regarding your trademark matter in our IP docketing system.

Can a US patent attorney also be a trademark attorney?

Yes, many US patent attorneys also practice trademark law. In the US, a patent attorney must be licensed by the USPTO to prosecute patent applications on behalf of others. So a US patent attorney must pass two bars:

  1. USPTO patent bar; and
  2. at least one state bar (e.g., California state bar).

Since a US patent attorney is a properly licensed lawyer, such an attorney is eligible to file and prosecute US trademark applications with the USPTO. Of course, eligibility is not the same as experience. International companies should seek out experienced US trademark attorneys who are familiar with common trademark issues, such as:

  • Office Action refusals based on likelihood of confusion or mere descriptiveness
  • specimen refusals
  • priority claims based on foreign trademark applications or registrations

A purely trademark attorney, however, cannot practice patent law. In particular, a US trademark attorney who has not been registered to practice before the USPTO in patent cases may not file patent applications for others.

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