Service · Trademarks & IP
Trademark registration at the USPTO, and IP counsel in Georgia
A brand is the one asset a business cannot rebuild from backups. Registering it in the United States is also the step most founders outside the US postpone until somebody else has filed the same mark first.
Filing a US trademark from outside the United States
The USPTO requires an applicant whose domicile is outside the United States to be represented by a licensed US attorney. That rule catches most Georgian companies by surprise, usually after a filing agent has taken their money and the application has gone nowhere. It does not require a US office or a US address: it requires a lawyer admitted in a US state.
I am admitted in New York, and I trained in US trademark practice at a Washington, D.C. firm. You deal with me in Tbilisi, in your own timezone, and the filing goes in under my signature.
What I handle
- Clearance searches. A search of the USPTO register and common-law use before you commit to a name, with a written view on registrability and on the real risk of a conflict.
- Applications. Preparing and filing the application, choosing the classes and the identification of goods and services, and advising on use-based versus intent-to-use filings.
- Office Actions. Responses to refusals, including refusals based on likelihood of confusion and on descriptiveness, and petitions for reexamination.
- TTAB proceedings. Oppositions and cancellations: answers, evidence, and legal memoranda.
- Maintenance. Declarations of use, renewals, and the deadlines that quietly kill registrations.
- Georgian and international protection. National filings and the Madrid route, so the US registration is not sitting on its own.
The search matters more than the filing
Most of the money wasted on trademarks is spent after the application, defending a name that was never clear to begin with. A clearance search costs a fraction of one Office Action response, and the answer it gives is often useful even when it is unwelcome: change one word now, or argue about it for eighteen months later.
What I give you is not a list of hits. It is a view on which of them actually matter, what the examining attorney is likely to do, and whether the mark is worth filing as it stands.
When the USPTO refuses
A refusal is not the end of the application. Most Office Actions turn on likelihood of confusion with a prior registration or on the mark being merely descriptive, and both are arguable. The response has a filing deadline with an extension available on request, and the arguments that work are the ones grounded in the examining attorney's own manual and in TTAB precedent rather than in how strongly the owner feels about the brand.
Defending a registration at the TTAB
A registration you already hold can be attacked, usually by someone who wants the name. Cancellation proceedings run on their own rules and their own calendar, and the first deadline arrives before most owners have found a lawyer. I have acted on the defence side of a cancellation petition, researching Federal Circuit and TTAB authority, drafting the memorandum and the answer.
Trademarks in Georgia
Georgian registration runs through Sakpatenti, and for a business that already trades here it is usually the cheaper half of the exercise. Where a company wants several countries at once, the Madrid Protocol is normally the sensible route, with the national filing as the base. Which order to do this in depends on where you actually sell, and it is worth ten minutes of planning before the first application rather than after the third.
Why work with me
I practised US trademark law at Raphael Bellum PLLC in Washington, D.C. as an Edmund S. Muskie Fellow of the US Department of State: trademark applications to the USPTO, clearance searches and freedom-to-use analyses, responses to Office Actions, petitions for reexamination, and the defence of a registration in a TTAB cancellation. I am admitted in New York and in Georgia, which is an uncommon combination in Tbilisi and the reason I can file for you directly rather than referring you abroad.
Frequently asked questions
Do I need a US attorney to register a trademark with the USPTO?
If your domicile is outside the United States, yes. The USPTO requires foreign-domiciled applicants and registrants to be represented by an attorney licensed in a US state, and applications filed without one are refused or suspended. The attorney does not have to be physically in the United States, which is why I can act for Georgian businesses from Tbilisi.
How long does a US trademark registration take?
Budget for the better part of a year even when nothing goes wrong. The application waits in a queue before an examining attorney looks at it, and if the mark is approved it is then published for opposition before it can register. An Office Action adds months, since you have a response deadline and the examining attorney then has to consider what you filed. Intent-to-use applications take longer still, because registration waits on proof of use.
What happens if the USPTO refuses my application?
You receive an Office Action setting out the ground for refusal, most often a likelihood of confusion with an earlier mark or a finding that yours is merely descriptive. You then have a deadline to respond, with an extension available on request, and the refusal can be argued, narrowed by amending the goods and services, or in some cases resolved with a consent agreement. Missing the deadline abandons the application, and refiling means paying the fee again and losing your filing date.