TRADEMARK APPLICATIONS & TYPES
United States: Which Trademark Application should I File?
The answer depends on the following scenarios:
1. Your US mark is currently being used.
2. Your US mark is not yet in use.
3. You have a mark filed or registered abroad that you wish to register in the United States.
4. You have a US registration that you wish to register abroad.
5. You have trademarks outside of the United States.
1. Your US mark is currently being used—“Use-Based” application: This type of filing requires the approximate date of the mark’s first use, plus proper proof of use (specimens) for each class of goods and services. If no issues are reported by USPTO or raised by third parties, the registration should be granted in approximately one year.
2. Your US mark is not yet in use—“Intent-to-Use” application: Once the mark is allowed for registration, the applicant has six months to either file a Statement of Use (SOU) or an Extension of Time to File a Statement of Use (EOT). EOTs are extendable up to five times (totaling three years). Each extension per class requires payment of government fees.
3. You have a mark filed or registered abroad that you wish to register in the United States: These filings are meant for applicants located outside of the United States who wish to file and protect their mark in the United States.
4. You have a US registration that you wish to register abroad: Owners of registered US marks can extend protection in other countries by using one or more available filing systems. At Brandia, we can support your business with assessing priorities and costs per country of interest. We will use the most effective methods to mitigate costs without compromising the level of protection for your business and trademarks.
5. You have trademarks outside of the United States— Filing, Prosecution, protection and enforcement: At Brandia, a licensed attorney can assist you with protecting your trademarks outside of the United States, either by filing the marks directly (where possible) or with the support of our international network of experienced trademark professionals. We can assist you in determining your business’ filing needs by selecting the most cost-effective mechanism without compromising the validity and duration of the mark.
your business with assessing priorities and costs per country of interest. We will use the most effective methods to mitigate costs without compromising the level of protection for your business and trademarks.
To view the country members of the Madrid Protocol, please see
Please see for a listing of country members of the European Union.
Whether you file a trademark in the United States or abroad, a US-licensed Brandia attorney will guide you through the filing process. We provide estimated filing budgets by country or by region and we are particularly skilled with global filing strategies and managing large portfolios. We also file separate national trademark applications in specific countries of interest through an extensive global network of trusted trademark agents.
GOODS AND SERVICES:
Trademarks (word marks and design marks) are used in connection with goods and services. A clear description of goods and services is usually a requirement to obtain registration. The level of description varies from country to country. At Brandia, a licensed trademark attorney may guide you through the selection process at no charge during our free consultation phase.