Ask the Collective

What are the key differences between filing a US trademark directly with the USPTO versus through WIPO/Madrid Protocol, and what proof of use is required?

The US trademark system works fundamentally differently from most other jurisdictions—it's first-to-trade rather than first-to-trademark, meaning you're not fully protected unless you're actively trading. **Filing routes and proof of use requirements:** - **WIPO/Madrid Protocol route** — Registration is loosely considered first use, and you'll need to prove use between years five and six of registration. This is the longer-term, lower-initial-risk path. - **Direct USPTO filing** — You'll need to prove use immediately, or file a contingent option (which effectively requires you to pay rent on the trademark every six months until you can prove use). This requires quicker action. - **Proof of use definition** — Proof of use must be evidence of sale of goods or promotion of goods. Simply importing into the US and movement through the chain of commerce is sufficient to make a 1(a) filing—you don't need to employ staff or be physically present in the USA. **Recommended trademark attorneys:** - **Novagraaf** (contact: Luke Portnow) — Used by multiple members globally and for US work. - **Inlex** (contact: Franck Soutoul, fsoutoul@inlex-monaco.mc) — Recommended for international trademark work. - **Lewis Silkin** — Used successfully over several years. - **Marks and Clerk** — Noted as decent but expensive. **Important caveat:** The process takes considerable time—members reported timelines of over a year for their filings. Plan ahead accordingly.