US Filing Basis

From October 1st, stautory fees for the filing of a US trade mark are increasing. Going via BKIP, our total fees for an application in one class will now be £775, and an additional fee of £335 for each subsequent class.

When filing in the US, the US Patent Office requests to see how the mark is used in US commerce due to the ammount of applications it recieves, it seeks to limit those registrations which may be “squatting” or prempting bigger companies registrations, or which may never hit the market and clog the system. Therefore when filing, an applicant must show that the trade mark is being used currently in the US market, is intended to be used in the future, has been applied or registered in your home country;

  • Use In Commerce;

If the trade mark is currently being used in business in the US, this is how your trade mark will be filed. In order to do so, evidence must be provided showing the use. This may be from a website, packaging, advertisment etc.

  • Intent to Use;

If you are not yet using the mark in the US, you may file on the basis of your intent to use the mark. Once the mark has been accepted for registration (usually within ten months), you will then be required to show proof the mark is being used. If at this time you are unable to show use, you may request an 6 month extesion, for upto 3 years. An application with intent to use incurrs a stautory fee of $120.

  • Foreign Registration

If you have the trade mark registered in another country, you may file on this basis. No proof of use if required. For this application, a scanned certificate of the registration certificate is required.

  • Foreign Application;

If within the last 6 months, an application has been made, the filing can be based upon this. Once the trade mark certifate comes through, you must provide this, or show intent to use in the US.

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