The most recent posts mentioned several filing bases you can use to get an application accepted in the US.  I’ve mentioned that these filing bases have different paths to registration, and that there are various traps in each method.  What if I told you I can eliminate some of those traps?

One option is to base your US application on multiple filing bases.  In one common scenario, clients base their application on an intent to use and use in commerce.  This allows them to capture many items in one application, and still gain the efficiencies of the use in commerce basis.

The US trademark system is complex.  It combines many of the benefits of the old British system along with the sophistication of the modern systems.  Like flipping an omelet, the results are fabulous when it is done well and super messy when it isn’t.

I want to meet your chef friend who sells products to local stores now and dreams of having a restaurant in the near future.  Ask her what her signature dish is, then tell her your friend can cook up a great trademark omelet.

The last post was about gaining US trademark rights based on foreign trademark applications.  I mentioned how easy that process is.  Guess what?  It is even easier to get US trademark rights from a foreign registration.

Each filing basis has a different path to registration.  This path is by far the simplest. From my perspective, these types of filings come from two separate paths. First, occasionally I have direct contact with a foreign company moving to the US. I can coordinate with them to identify their foreign registrations and use these to file applications to register the same brands in the US. Second, I have created a network of dozens of law firms in nearly 100 countries.  Many of these law firms call on me to file US applications for their foreign clients.

I want to meet your friend who just transferred with his company to the US from another country.  He’s been asked to establish a US base of operations.  Ask him if he’s thought about whether his foreign brands will be protected in the US, and encourage him to get this process going while he’s learning how great our business community is.  Once you’ve got his interest, tell him you know a guy, and arrange a 3-way call.

Business owners come in all shapes and sizes. We typically think of a member of our community who wants to add value to their hometown. Thanks to a good friend, I recently met people from other countries who want to invest in our country.

One way to seek US trademark rights is based on an application in a foreign country. Thanks to various treaties, this method has many advantages including enhanced priority dates and not having to show the brand is used in the US.

Patrick helps foreign companies sell their products in the US. His expertise is logistics, but his customers wanted to know that their brands could be used in the US. I reviewed his customer’s global trademark rights and suggested we extend these foreign rights to the US.

I want to meet the shipping logistics expert in your life. They get products to and from the US. Ask them if they want a competitive advantage for their services, then let them know I can easily help their foreign clients obtain US trademark rights.

What’s your superpower? Some of us are great at math, others can tell great stories. Me? I can use Intent to Use applications to build great brand protection strategies. (Don’t laugh– we don’t get to choose our superpowers!)

There are many advantages to using this filing basis to claim federal trademark rights. The biggest is that you can develop rights in a brand that predates your actual use. Another is that you get to include many items in an application at a very early stage.

Bailey was tired of his corporate job. He dreamed of opening a vegetarian restaurant named Cream of the Crop. I used the intent to use tool to help him secure rights in this name long before he quit his corporate job.  Further, we added other items such as prepackaged foods.

I’m a great fit for the corporate cog who is saving money to leave the rat race. They want to replace their downtown 9-5 finance job for a comic book store in the suburbs. He has a vision but is concerned someone will beat him to the punch. Ask him if his shop will have the original Superman, then let him know about my superpower—he might believe it is better than flight.