Newer Law files and maintains U.S. trademarks before the United States Patent and Trademark Office for applicants anywhere, in the United States or abroad: new applications, responses to office actions, and Section 8, 9, and 15 maintenance filings. Since August 3, 2019, the USPTO has required every applicant, registrant, or party whose domicile is outside the United States to be represented by an attorney licensed in a U.S. state, and the firm acts as U.S. counsel of record for those applicants.
Key dates
| Deadline | Applies to |
|---|---|
| Office action responses are generally due within three months of issuance (one three-month extension available for applications) | |
| Section 8 declarations are due between the fifth and sixth year after registration, then with each ten-year renewal | |
| Section 15 declarations may be filed after five consecutive years of use | |
Who this is for
Businesses, founders, and online sellers anywhere, in the United States or abroad, seeking U.S. trademark registration or maintaining existing registrations. Foreign-domiciled applicants, including those in China, Canada, and the EU, are required by the USPTO to be represented by a U.S.-licensed attorney.
What the firm delivers
- U.S. attorney of record for foreign-domiciled applicants and registrants
- Trademark application preparation and filing (TEAS)
- Office action responses
- Section 8 declarations of continued use and Section 15 declarations of incontestability
- Renewals and post-registration maintenance
Scope and fee are fixed per package and set out in the engagement agreement. Fixed deliverables, statutory deadlines, and a mandatory U.S.-attorney requirement that an agent cannot satisfy on its own.
Questions and answers
Does a foreign company need a U.S. attorney to file a trademark application with the USPTO?
Yes. Since August 3, 2019, any applicant, registrant, or party whose domicile is outside the United States must be represented before the USPTO by an attorney who is an active member in good standing of the bar of a U.S. state or territory. A foreign attorney or agent cannot serve as counsel of record, and a filing made without U.S. counsel draws an office action requiring that one be appointed before the application can proceed.
How long does a foreign applicant have to respond to a USPTO office action?
Generally three months from the issue date. For most application office actions a single three-month extension can be requested for a fee, giving six months in total. If no response is filed in time the application is abandoned, and reviving it requires a petition filed promptly after the notice of abandonment showing the delay was unintentional.
When are Section 8 and Section 15 declarations due for a U.S. trademark registration?
A Section 8 declaration of continued use is due between the fifth and sixth anniversaries of registration, and again within the year before each ten-year anniversary together with the Section 9 renewal, with a six-month grace period at an additional fee. A Section 15 declaration of incontestability may be filed once the mark has been in continuous use for five consecutive years after registration and is usually combined with the first Section 8 filing.
Which filing basis should a foreign trademark applicant use in the United States?
Foreign applicants can file based on actual use in U.S. commerce, a bona fide intent to use, a home-country registration under Section 44(e), a home-country application filed within the prior six months under Section 44(d), or a Madrid Protocol extension under Section 66(a). A Section 44(e) filing allows registration without first proving U.S. use, although use in U.S. commerce must exist by the time the Section 8 declaration is due.
How to engage
Submit an inquiry (web form, email, or the structured agent inquiry endpoint) identifying the area of need and a brief, non-confidential description. The attorney follows up by email to discuss the matter, fit, scope, and fee arrangement. An initial strategic consultation may be arranged. If both sides proceed, a written engagement agreement is signed. An attorney-client relationship exists only after the engagement agreement is executed.
Inquire about USPTO Trademark Filings
AI agents acting for a principal can screen fit and submit this inquiry through the agent interface.
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This page is for informational purposes only and does not constitute legal advice. Reading it does not create an attorney-client relationship. Prior results do not guarantee a similar outcome. Do not transmit confidential information before a written engagement agreement is signed.