Trademark Registration Attorney

A trademark is the name, logo, slogan, or other identifier that tells customers your goods or services come from you. In a market as crowded as New York City, that identifier is often the most valuable asset a business owns. Registration converts it from something you merely use into something you can enforce. Our trademark attorneys prepare and prosecute applications before the United States Patent and Trademark Office (USPTO) and the New York Department of State, respond to refusals, and keep registrations alive after they issue.

Two Registration Systems Available to New York Businesses

A New York business can register a mark at the federal level, at the state level, or both. The two systems serve different purposes.

Federal registration under the Lanham Act

Federal registration is governed by the Lanham Act, 15 U.S.C. § 1051 and following. A registration on the Principal Register gives the owner nationwide constructive notice of its claim of ownership (15 U.S.C. § 1072), a legal presumption of validity and exclusive right to use the mark (15 U.S.C. § 1057(b)), the right to use the ® symbol, and access to federal court and to Customs recordation to block counterfeit imports. Federal registration requires use of the mark in commerce that Congress may regulate, which for most New York businesses means interstate or online sales.

New York State registration under General Business Law Article 24

New York maintains its own registry under General Business Law §§ 360 through 360-o. Applications are filed with the Department of State under GBL § 360-b, which requires the applicant's name and business address, the goods or services on which the mark is used, the class under GBL § 360-i, the date of first use in New York and elsewhere, and a specimen showing the mark as actually used. The filing fee is $50 per class. A state registration lasts ten years and may be renewed for successive ten-year terms on an application filed within six months before expiration (GBL § 360-e). State registration is useful for a business that sells only within New York, such as a single-location restaurant or a local service provider, because the Lanham Act's interstate commerce requirement may not be satisfied. GBL § 360-l also provides a cause of action for dilution of a distinctive mark without requiring proof of competition or likelihood of confusion, a remedy that in some respects is broader than its federal counterpart.

State registration does not, however, create rights beyond New York's borders, does not give constructive nationwide notice, and does not bar a later federal registrant from obtaining a federal certificate. For most businesses with any online or out-of-state customer base, we recommend a federal filing as the primary strategy and treat state registration as a supplement.

Before You File: Clearance

Roughly a third of federal applications receive a refusal based on likelihood of confusion with an earlier-filed mark under 15 U.S.C. § 1052(d). Filing fees are not refunded when that happens. A clearance search performed before filing identifies conflicting registrations, pending applications, and unregistered common law users. Common law rights matter in New York: GBL § 360-o preserves the rights of anyone who used a mark before you, whether or not they registered it, and a prior user in the five boroughs can block your use in that territory regardless of your federal certificate.

We search the USPTO database, the New York Department of State registry, business entity records, domain names, and marketplace listings. We then provide a written opinion on the risk of refusal and the risk of an infringement claim. Where the risk is high, adjusting the mark before launch costs far less than rebranding after a cease-and-desist letter.

Preparing the Federal Application

A federal application must identify the filing basis, the mark, the goods or services, and the international class or classes. The electronic base application fee is currently $350 per class. Errors in these choices are the leading cause of avoidable office actions.

• Filing basis: Section 1(a) (15 U.S.C. § 1051(a)) is for marks already in use in commerce and requires a specimen at filing. Section 1(b) (15 U.S.C. § 1051(b)) is for marks the applicant has a bona fide intent to use; it secures a priority date before launch but requires a later Statement of Use.
• Standard character versus special form: A standard character mark protects the words regardless of font or color. A special form (design) mark protects a specific logo. Many clients file both.
• Identification of goods and services: The description must be definite and cannot be broadened after filing. A Brooklyn roaster that lists only "coffee" cannot later add "café services" to the same application.
• Specimen: For goods, a photograph of the mark on the product, packaging, or a point-of-sale display. For services, advertising or a website showing the mark used in connection with the services. A mock-up or printer's proof will be rejected under 37 C.F.R. § 2.56.

Examination and Office Actions

After filing, the application waits for assignment to an examining attorney, currently a period of several months. The examiner reviews the application for compliance with the statute and searches for conflicting marks. Common grounds for refusal include likelihood of confusion (§ 1052(d)), descriptiveness (§ 1052(e)(1)), primarily geographically descriptive terms (§ 1052(e)(2)), and surnames (§ 1052(e)(4)). A mark such as "Manhattan Bagels" for bagels sold in Manhattan will draw a geographic descriptiveness refusal.

If the examiner finds a problem, the USPTO issues an office action. Under 37 C.F.R. § 2.62, the applicant has three months from the issue date to respond. A single three-month extension is available for a $125 fee, requested before the original deadline. Missing the deadline abandons the application under 37 C.F.R. § 2.65.

Worked example: an office action issues on March 3, 2025. The response is due June 3, 2025. If an extension is filed and paid by June 3, the new deadline is September 3, 2025. No further extension is available. If no response is filed by September 3, the application is abandoned, and the only recourse is a petition to revive under 37 C.F.R. § 2.66 within two months of the notice of abandonment, which requires a statement that the delay was unintentional.

A response may include legal argument, amendments to the identification, a disclaimer of a descriptive term, a claim of acquired distinctiveness under § 1052(f), or evidence of the marketplace. Where the examiner maintains a refusal after a response, the applicant may appeal to the Trademark Trial and Appeal Board under 15 U.S.C. § 1070.

Publication and Opposition

Once the examiner approves the mark, it is published in the Official Gazette. Under 15 U.S.C. § 1063, any person who believes they would be damaged by the registration has 30 days from publication to file a notice of opposition or a request to extend the opposition period. Extensions of up to 90 days are available on request, and a further 60 days with consent or good cause, for a maximum of 180 days from publication. Oppositions are litigated before the Trademark Trial and Appeal Board under the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Federal Rules of Civil Procedure. We monitor publication for our clients' marks and file oppositions against confusingly similar applications when warranted.

Intent-to-Use Applications: The Statement of Use Deadline

If the application was filed under Section 1(b), the USPTO issues a Notice of Allowance after the opposition period closes. Under 15 U.S.C. § 1051(d)(1), the applicant then has six months to file a Statement of Use showing actual use of the mark in commerce. Under § 1051(d)(2), the applicant may request extensions in six-month increments, for a total of up to 36 months from the Notice of Allowance. Each extension request carries a fee and, after the first, requires a statement of good cause.

Worked example: a Notice of Allowance issues October 1, 2025. The Statement of Use is due April 1, 2026. If the product is not yet on the market, a first extension moves the deadline to October 1, 2026. Successive extensions can move it to April 1, 2027, October 1, 2027, April 1, 2028, and finally October 1, 2028. If no Statement of Use is filed by October 1, 2028, the application is abandoned and the priority date is lost.

After Registration: Maintenance Deadlines

A federal registration does not run indefinitely on its own. Two filings are mandatory.

1. Section 8 Declaration of Continued Use: Under 15 U.S.C. § 1058(a)(1), the owner must file a declaration of continued use, with a current specimen, between the fifth and sixth anniversaries of registration. A six-month grace period follows on payment of a surcharge. Failure to file cancels the registration.
2. Combined Sections 8 and 9 Renewal: Under 15 U.S.C. §§ 1058 and 1059, the owner must file a renewal application and a declaration of continued use within the year before each ten-year anniversary, again with a six-month grace period.

Worked example: a registration issues May 15, 2025. The Section 8 declaration may be filed between May 15, 2030 and May 15, 2031, or with surcharge through November 15, 2031. The first renewal may be filed between May 15, 2034 and May 15, 2035, or with surcharge through November 15, 2035. We docket these dates for every registration we obtain and contact clients well in advance.

Between the fifth and sixth years, the owner may also file a Section 15 declaration of incontestability under 15 U.S.C. § 1065 if the mark has been in continuous use for five consecutive years and no adverse decision or pending proceeding exists. An incontestable registration is conclusive evidence of the owner's exclusive right to use the mark, and it eliminates most challenges based on descriptiveness.

For New York State registrations, GBL § 360-e requires renewal within the six months before the ten-year expiration date. There is no mid-term maintenance filing.

Ownership, Assignment, and Recording

A mark is owned by the entity that controls the quality of the goods or services. Founders who file in their personal names and then operate through a New York LLC or corporation create a defect that can invalidate the registration. We confirm the correct applicant before filing and prepare assignments when the business restructures. Federal assignments should be recorded with the USPTO Assignment Recordation Branch under 15 U.S.C. § 1060; state assignments are recorded with the Department of State under GBL § 360-f. An assignment of a mark without the goodwill of the business it symbolizes is void.

Industries We Serve

Our clients include restaurants and food producers, fashion and apparel brands, software and fintech companies, professional service firms, entertainment and media companies, and consumer product manufacturers. We also represent marine businesses, including yacht brokers, charter operators, and boatbuilders, whose brand protection questions often arise alongside yacht documentation and registration matters. Each industry has its own conventions about what is descriptive, what specimens the USPTO accepts, and how goods and services should be identified.

Why Retain Counsel Rather Than File Yourself

The USPTO permits applicants to file without an attorney. The forms are not difficult to complete; the judgment calls behind them are. An identification drafted too narrowly leaves gaps a competitor can exploit. One drafted too broadly invites a refusal or a later cancellation for non-use. A specimen that does not show the mark functioning as a source identifier draws a refusal that cannot be cured without a new filing date. Our trademark attorneys handle these decisions daily and know how New York examiners and the Board have treated similar marks.

We offer flat-fee pricing for clearance searches, application preparation, and maintenance filings. Office action responses and opposition proceedings are quoted after we review the specific refusal or claim.

You can contact the Law Offices of Albert Goodwin by phone at 212-233-1233 or by email at [email protected].