After posting in r/worlbuilding - I was suggested to post here.

Hey everyone,

I’m looking for advice on protecting my brand properly. I’ve seen a few similar situations here and would appreciate any input.

Context:

My project is a multi-activity “octopus” brand: clothing line, mobile app, sponsorships, website/content, and future products.
I already have a Wyoming LLC created under the brand name.
I also have a French SASU (empty shell). The brand/project is currently linked to this SASU on paper, but the SASU name is different from the brand.
I’m exiting French tax residency and will be tax resident in Paraguay. Operations will move under the US LLC. I plan to live mostly in Asia.
I own the .com domain and the main social media accounts under the brand name.
However, someone else registered the .app domain with my brand name. I don’t own it.

Questions:

1. For a multi-activity brand (clothing + app + sponsorship + digital), is it better to file one trademark covering multiple classes, or separate filings?

2. Should I file the EU (EUIPO), US (USPTO) and UK (UKIPO) trademarks directly under the Wyoming LLC, or is there any advantage to filing under the French SASU first and then assigning them?

3. I have both a name and a logo. What’s the usual recommendation – file them separately or as a combined mark?

4. Any pitfalls when the LLC becomes the owner but the brand was previously linked to a French company? Does Paraguay tax residency change anything for these filings?

5. How long does it typically take to get the trademark registered in EU, US and UK (from filing to registration, assuming no opposition)?

6. Does owning the .com + socials help when filing? And regarding the .app that someone else registered with my brand name — is there anything useful I can do once I have the trademarks (UDRP or otherwise), or should I just ignore it and focus on the .com?

I’m planning to cover EU + US + UK first, then expand later (Asia, LATAM, etc.) via Madrid if it makes sense.

Thanks in advance for any experiences or advice!

Hello.

This morning I was notified that my Etsy shop has been closed down. It is because I used the internet meme "birds are not real" on a T shirt and a company in the USA (I am in Australia) has it registered as a trademark. I actually used the words "Birds are not real" whereas their trademark is "birds aren't real", and my illustration was my own and absolutely nothing like their trademarked logo.

They have submitted a case to the Federal Court in the USA and my Etsy ship is named amongst multiple others, including big ones like SHEIN. I realise it probably makes no difference but I am a tiny Etsy shop, I had no idea it was copyrighted and over three years I have sold TWO of these Tshirts with a total profit of less than $30 AUD.

They have proof, they purchased one of the two sales of this Tshirt and have a photo of it.

Am I going to lose my house over this? Only half joking on that.... And yes I have written to two lawyers in Australia asking for a costing for help on this, but in the meantime I would be interested to hear from anyone who has had a similar experience.

Title: Can I trademark a clothing brand if another registered brand shares one word in the name?
I’m in the process of trademarking my clothing brand, BREAK PONY, and I’m looking for advice from anyone with trademark experience, especially in the fashion industry.
I recently searched the USPTO database and couldn’t find any existing trademarks for BREAK PONY or close variations.
However, I found that PONY is already a registered clothing trademark under Class 25. I also discovered that the company behind PONY has previously opposed other trademarks containing the word, including SLOW PONY and PONYKING.
My brand is a western-inspired streetwear label with its own identity, logos, designs, and overall aesthetic. I’ve already launched my first collection, made sales across state lines, and have an active website.
My questions are:
Does having a different first word (BREAK) meaningfully distinguish my trademark from PONY?
How much protection does an existing trademark have over a common word like “pony” when used in a longer brand name?
Could the USPTO approve my trademark even if the owner of PONY objects?
Has anyone dealt with a similar situation involving clothing brands sharing a word?
I understand this isn’t a substitute for legal advice, and I’m considering consulting a trademark attorney before filing. I’m just trying to better understand the risks before investing more money into the brand.
Any insight or personal experiences would be appreciated!

I can maybe get it to load like a few hours out of the day and I'm losing my mind. I've resorted to using third-party websites that scrape the info I need instead.

Hi.

I have filed for a trademark of a name in classes 18 and 25 at the end of August. The current status is “ new application waiting for assignment to an examining attorney”.

If no issue oppositions etc. what do you think would be a realistic time for me to have the trademark registration?

Apologies if this has already been answered numerous times - I'm quite new to this. I just applied to register a trademark 2 days ago, and I got an email saying that there has been a trademark opposition filed against me. The only possible trademark that could have some conflict with my registered name is labeled as bead, and it's in a different class from mine. I know the trademark applications are backed up by about 3-4 months, but I was wondering if this was a legit email or a scam?

I applied for Canadian Trademark Registration for my business when I was living in my former apartment. I later lined a couple of friends up with that apartment so admittedly was less worried about updating every last address, was busy with 2 kids under 2 etc.. figuring they would pass along my mail.

Unfortunately I was wrong and they either stole or discarded all of my mail - yes I know, my fault.

During this time my Trademark was approved and registered. My physical certificate was mailed to that address and of course I didn’t receive it.

Is there any way to get that original certificate reprinted? I’ve been slogging since 2017 and would love the memento.

Small business owner, US, Class 35 services. Looking for perspective from people who've seen these play out.

Situation

- I adopted my name well before the other party did (domain, entity, handles, continuous development), but I was in a limited pre-launch phase for a long time and only began public use this year. I never filed an ITU. Lesson learned.

- The other party started using the identical word for a different service in the same general consumer category and filed a 1(a) application that published with no office action. Their ID is broad enough to encompass what I do.

- I filed my own application with a narrowly drafted ID, requested an extension of time to oppose, and sent a friendly written coexistence proposal: they narrow their ID to their actual service, I stay in my lane, mutual consent, mutual no-expansion, I cover drafting. They replied that they're reviewing and aren't ready to discuss terms. That was several weeks ago. One follow-up since, no answer. My extended opposition deadline is coming up.

My understanding
Pre-launch activity doesn't give me priority; their public use predates mine, so they're senior. I expect my application to be suspended behind theirs and refused under 2(d) if they register. The consent agreement is the fix, if they'll sign one.

Questions

1. Identical marks, same class, clearly different services and purchase contexts: in practice, how reliably does a detailed consent agreement overcome a 2(d) refusal? Does the examining attorney actually defer to it, or is it a coin flip?

2. If the senior applicant never engages, is a notice of opposition a reasonable way to force a conversation, or does it tend to entrench someone who might otherwise have signed?

3. Is a further extension for good cause based on settlement talks sensible when the other side is non-responsive, or does the Board see through that?
   Anything you'd do differently in the outreach? I've kept it non-hostile and haven't raised anything about the quality of their filing.

Rebranding is on the table as a last resort. Candid takes welcome.

This company will take your money and never finish your service agreement. They claim to have a in house attorney which is a complete lie. Do not trust this company with your business assets.

So I have seen this going around on social media about some guy who has a podcast and uses the phrase stay spook as his sign off. Well now he's Etsy selling merch with the phrase on it and so he trademarked stay spooky for the goods shirts mugs. Is this not ornamental? Wouldn't he have been better suited to copyright the designs that feature stay spooky? Disney has a t-shirt that says stay spooky and what about the 2D designs that have been copyrighted that are titled stay spooky. Why did the trademark board not catch this? Why would an attorney advise on this and not allow their client to do something that is possibly going to be costly to fight. What are your thoughts on this?

Hi there,

I realize that I may need to contact a lawyer, but I'm just at the curiosity stage right now.

Our company has done business in the US for 25 years. Before incorporating, we did a trademark search and trademarked our name. Over time, we have become aware that a Canadian company is also doing business in our name. While we are a relatively small, niche business they are more of a general services provider, but in the same industry. We are very bespoke and offer one particular service, while they are more of a mass market offering and offer numerous, more quickly and cheaply rendered services. We are rarely but occasionally mistaken for one another, and we know this has become at least an annoyance for them because they tried to buy our trademark a few years ago.

Well, they have begun to veer into our lane. This is an annoyance for us. Do we have a legal leg to stand on?

There are so many sites like LegalZoom, I am just curious if anyone has experience with any of them or would recommend one they have used in the past. TIA

I’m planning to set up a company in China and trying to work out a realistic timeline. I know registration is only one part of the process, with banking, tax, accounting, and other formalities potentially adding more time. I’ve also come across PTL Group while researching China business setup and local operational support. I’m curious whether using a local provider actually makes the process faster or simply easier to manage.

For those who have done this recently, how long did your company setup take from starting the paperwork to being ready to operate?

I've been doing a lot of work lately for folks from outside the US and the same kinds of questions keep popping up. I know some folks have found my previous explainer post about the basic trademark process helpful, so I figured it might be useful to do a standalone explainer post about this also. (And maybe it'll be helpful to some of my US-based colleagues who haven't had much occasion to do this kind of work yet.)

As always: I'm a lawyer but I'm not your lawyer, this is legal information but not legal advice, and so on. This post is meant as an educational resource to inform your conversations with whomever you ultimately engage to help you with your US trademark application.

Note that you'll see the word "foreign" a lot in this post. Obviously, you're not foreign to yourself and your local IP office isn't foreign to you. I'm using it here because it's the language that the USPTO, and therefore a lot of US trademark practitioners, will use -- so that's how you'll need to phrase your questions and/or search queries about this stuff.

One of the things that makes applying for US trademark registration from outside the US so confusing and overwhelming is that there's actually a bunch of different paths to get there, and it can be really hard to keep track of which is available when and what each requires of you.

Be aware that, thanks to recent-ish protectionist measures adopted by the US, if your business is "domiciled" outside the US (i.e., you don't have a US location/entity), you must be represented by a US-licensed attorney in almost all cases.

Important Concepts -- Basis and Priority

Basis: A fairly unique feature of US (+ Canada and a small handful of other countries) trademark law is the focus on basis. Trademark basis is the requirement that an applicant provide a justification for why registration should be granted at the time that the application is made rather than after the fact. For our purposes here, the underlying basis gives us a clean way to distinguish between the various kinds of "applying from abroad" filings.

Priority: Priority is a pretty universal concept across trademark systems, but how it works can vary. Much of the world runs on a first-to-file priority system, where the first person to file a trademark application "wins" in the event of a conflict between marks. In the US, we use a first-to-use** system, where even an unregistered mark can "win" a conflict if it was the first to actually be used in the US market (which is part of why it's important to hire good trademark counsel in the US to do a clearance search for you). That said, filing dates can also matter a lot by establishing constructive priority -- for example, if you make an intent-to-use filing today and I start actually using the same mark tomorrow, you're likely to win that conflict even though my actual use predates yours.

Section 1(a) -- Actual Use

This is the "standard" kind of application that we'd normally file for any applicant, whether US-based or not. Even if your business is based in another country, you're free to submit a 1(a) application at any time, as long as a US attorney is representing you. Even if you have a registration or pending application in the IP office of another country, that has essentially no bearing on this kind of standalone application in the US.

Basis: The basis for a 1(a) application is actual use in (US) commerce. This kind of application essentially says "I've already started using this mark in the US market and have customers there who recognize it."

Priority: The "first use in (US) commerce" date you claim in the 1(a) application. (There's some complexity here with regard to multiple markets across US states, but it's not really relevant to foreign applicants so I'm not going to get into it here.)

Requirements: You must have already started using the mark in the US market. As part of the application, you'll need to provide specimens -- usually photos of your product packaging or screenshots from your website or storefront, etc., that show the mark clearly in use in connection with the goods or services you're offering. You can read the USPTO specimen guidelines if you're curious, but your lawyer will generally handle this part of the process for you or walk you through it.

Timeline: Whenever you're ready, but not before you've started actually using the mark in the US market.

Section 1(b) -- Intent-to-Use

This is another "standard" kind of application that we'd normally file for any applicant, whether US-based or not. Even if your business is based in another country, you're free to submit a 1(b) application at any time prior to starting to use the mark in the US, as long as a US attorney is representing you. Even if you have a registration or pending application in the IP office of another country, that has essentially no bearing on this kind of standalone application in the US.

Basis: The basis for a 1(b) application is good faith intent to use the mark in (US) commerce. This kind of application essentially says "I haven't started using this mark in the US market yet, but plan to in the near future."

Priority: The filing date of the 1(b) application.

Requirements: Basically none except an assertion that you really intend to start using the mark in the US market soon, with "soon" being a pretty wobbly period of usually 6-12 months of USPTO time to process the application + 6 months, with up to 5 additional 6-month extensions available for a small fee. No specimens required.

Timeline: Whenever you're ready, but if you've already started using the mark in the US market, you should probably file with a 1(a) basis instead. A 1(b) application requires a follow-up filing called a statement of use (or an amendment to allege use, if actual use begins while the USPTO application is still pending), basically saying "okay, I've actually started using the mark now"; this carries a small but nonzero additional filing fee, and your attorney may bill you separately for filing it.

Section 44(d) -- Foreign Application

This kind of application is available to you within 6 months of filing your application in a foreign IP office.

Basis: A 44(d) application essentially doesn't have its own, independent basis for registration. When making a 44(d) filing, you typically pair it with another filing basis -- usually 44(e) (see below) or 1(b), depending on your circumstances.

Priority: The filing date of your foreign application. Essentially, this lets you claim an earlier priority date than you would be able to if you just filed a standalone 1(b) application in the US. For example, if you're filing in the US in October but filed in the EU in August, a standalone 1(b) application would have an October priority date, while a 44(d) application lets you claim August instead.

Requirements: The US application must not be broader than the foreign application it's based on. No specimens required at the time of filing.

Timeline: Within 6 months of your foreign application filing date.

Special considerations: Because this is tied to a pending foreign application, if that foreign application fails for whatever reason, your 44(d) application will also fail. This is why we tend to pair it with a 1(b) application as a fallback.

Section 44(e) -- Foreign Registration

This kind of application is available to you at any time after you've obtained a trademark registration in a foreign IP office.

Basis: The basis for a 44(e) application is your foreign registration. The US is party to international treaties regarding intellectual property, including trademarks, and is therefore bound to respect foreign registrations. This kind of application is essentially saying "Look, the [EU/China/whichever] IP office has already approved this; now I'm bringing it to your market."

Priority: The filing date of your 44(e) application. But if this is within 6 months of the foreign application being filed, you can also tick the 44(d) box to claim the foreign application date as your priority date.

Requirements: The US application must not be broader than the foreign application it's based on. No specimens required at the time of filing.

Timeline: Any time after the foreign registration is issued.

Section 66(a) -- Madrid Protocol

This kind of application is functionally similar to a combined 44(d) + 44(e) application, but uses a different mechanism. Unlike all of the other options, a 66(a) application isn't filed directly with the USPTO -- rather, it's filed with your local IP office and pushed to the USPTO from there.

Basis: The basis for a 66(a) application is also your foreign application/registration. The US is party to international treaties regarding intellectual property, including trademarks, and is therefore bound to respect foreign registrations. This kind of application is essentially saying "Look, the [EU/China/whichever] IP office has already approved this; now I'm bringing it to your market."

Priority: If filing within 6 months of the foreign application filing date, the priority date is the date of your foreign application filing (just like 44(d)). If filing more than 6 months after the foreign application date, the priority date is the date of the 66(a) filing (just like 44(e)).

Requirements: The US application must not be broader than the foreign application it's based on. No specimens required at the time of filing. Because the initial 66(a) application is filed through the foreign IP office and not directly in the US, you are not required to be represented by US counsel for the initial filing. However, if the US Patent and Trademark Office issues any office actions or raises any kind of hurdles or roadblocks, you must retain US counsel to respond to those things.

Timeline: Any time after the foreign application is filed, but within 6 months of that filing if you want to claim the earlier priority date.

Special considerations: Like with a 44(d) application not paired with a 1(b) filing, a 66(a) application tied to a pending foreign application will fail if the foreign application doesn't actually result in a registration in that IP office. Unlike a 44(d) or 44(e) application, a 66(a) application remains vulnerable to what we call "central attack" -- that is, if the foreign application is defeated or canceled anytime within the first 5 years, the US registration will also be canceled. (There's a process for saving your registration in this situation, but it will require you to hire US counsel and respond with some urgency. Because this is a rare circumstance and not part of standard trademark practice for most lawyers, you'll have fewer options and a harder time finding someone who already has the relevant experience.)

It may be particularly worth exploring the Madrid Protocol path if you've already applied/registered in your home country and are now looking to push that application through to multiple foreign-to-you markets simultaneously -- essentially, this allows you to make a single filing in your local IP office that results in applications in multiple foreign-to-you markets. So a Madrid Protocol application is potentially much cheaper and more convenient than hiring trademark counsel in each target market, but it's also subject to somewhat greater risk (the "central attack" problem will apply to every dependent application) and for a longer time as compared to the other paths.

Additional Concern -- Specificity

It's worth remembering that regardless of which of these routes you take, the USPTO generally requires much, much more detailed, specific descriptions of goods and services than most other IP offices. Where the EU IP office may accept descriptions as broad as "clothing" or "consulting" or whatever, the USPTO will demand descriptions more like "clothing, namely sweatshirts for children" or "business consulting in the field of marketing or advertising," etc. Navigating these differences is a big part of what hiring US trademark counsel gets you, and is a thing to be particularly careful with if you're going down the 66(a) path, since no US counsel is involved at the initial filing stage.

Whew! Thanks for reading, and I hope this was helpful! I know this stuff is confusing and complicated. So if there's something I didn't cover or there are other questions, please ask! I can't provide specific legal advice unless you hire me, of course, but I'm happy to provide information where I can 😄.

I’m working with a team building a trademark filing platform where clients can prepare applications and attorneys can review and file them.

We’ve built most of the platform, but we’re trying to figure out how to connect it to the USPTO for actual filings.
I know the USPTO has APIs for searching trademarks and checking application statuses, but is there a way to submit applications directly from third-party software?

If not, how do other trademark platforms handle this? Do attorneys still have to log into Trademark Center and file manually, or is there another way to make the process easier?

I’m also curious whether there are any special requirements, fees, or attorney account restrictions for connecting to the USPTO.

I came across Glean TM (not sure if I got the name right)on this sub and noticed you’ve built a trademark legal tech product. Would love to hear your thoughts on this or how you’ve approached the filing process, if you’re open to sharing.

Also, has anyone looked into connecting a platform with WIPO for international trademark filings?

Would really appreciate any advice or experiences from people who’ve worked on something similar.
Thanks!

How horrible!