Register a U.S. Trademark, Protect Patents

Intellectual Property with U.S. Attorneys in Munich

Registering a trademark in the U.S. or enforcing a U.S. patent follows different rules than in Germany: U.S. law follows the “first-to-file” principle, but “first-to-file” does not always mean “first-to-market,” and license agreements under U.S. law require a different approach than standard German contracts. These differences determine the value of your portfolio in the U.S. market.

We advise German companies on establishing and enforcing their intellectual property rights in the United States. This advice is provided by our U.S. attorneys in Munich—in collaboration with our colleagues in New York, Boston, and San Francisco, as needed.

Challenges

The U.S. patent process differs from the German and European processes in terms of deadlines, the burden of proof, and procedural steps: Anyone who fails to respond to an Office Action—a notice of rejection issued during the examination process—within the prescribed time limit risks losing their application.

In the U.S. trademark system, use is also a factor: A registration with the USPTO does not automatically protect against an opposition before the TTAB or against a stronger trademark that was used earlier.

Solutions

We guide you through the entire examination process for your U.S. patent application—from the initial filing to timely responses to every office action.

We conduct a preliminary search of your U.S. trademark to check for conflicts, assist with the filing with the USPTO, and represent you in opposition proceedings before the TTAB—all in alignment with your German trademark strategy.

Let's talk about your intellectual property protection in the United States.

Whether it’s a patent application, trademark protection, or a license agreement: During our initial consultation, we’ll assess the current status of your IP protection in the U.S. market and determine the next steps. You’ll speak directly with our U.S. attorneys in Munich—and when necessary, we’ll bring in our colleagues in New York, Boston, or San Francisco.

Our Services

Four building blocks for protecting your intellectual property in the U.S. market—from patent applications to trademark protection and licensing agreements, all the way to an IP strategy for your portfolio. All four follow the same principle: intellectual property rights and agreements that are enforceable under U.S. law and align with your German IP strategy.

U.S. Patent Application: Procedures and Office Actions

A U.S. patent application undergoes an examination process at the United States Patent and Trademark Office (USPTO) that differs from the German and European procedures in terms of its process and the logic of the evidence: The examiner raises objections via an Office Action—a rejection notice that may concern novelty, non-obviousness, or formal requirements and to which a response must be filed within a set deadline. Anyone who misses the deadline forfeits the application or must reinstate it by paying additional fees. The disclosure requirements vis-à-vis the USPTO also differ from European standards.

We guide you through the application process—from drafting the claims to grant—and respond to every office action in a timely manner. If your U.S. patent is subject to an infringement claim or opposition proceeding, we represent your position with your entire portfolio in mind.

Trademark Registration in the U.S.: USPTO and TTAB

Unlike under German trademark law, simply filing an application with the USPTO is often not sufficient under the U.S. system: In addition to the “first-to-file” principle, U.S. law frequently requires proof of use for final registration, meaning that a trademark used earlier but not registered can jeopardize your own application. Before filing an application, we therefore check whether any conflicting U.S. trademarks exist. If an opposition is filed against your application, the Trademark Trial and Appeal Board (TTAB) will decide the matter—a separate proceeding with its own deadlines and rules of evidence that differs significantly from the opposition proceedings before the DPMA.

We file your trademark with the USPTO, conduct a preliminary search for conflicts, and represent you in opposition proceedings before the TTAB. In doing so, we align your U.S. trademark with your German and international trademark strategy.

License Agreements and IP Assignment Under U.S. Law

License models under U.S. law govern liability, termination, and warranties differently than standard German contracts: Limits on liability, termination rights, and warranty exclusions follow their own principles under U.S. contract law, and a German contract template adopted without due consideration often shifts risks to the licensor. The transfer of IP rights—the assignment—must also meet certain formal requirements under U.S. law in order to be enforceable against third parties and in U.S. courts.

We draft license agreements and assignments that protect your intellectual property in the U.S. market rather than diluting it—from royalty payments to termination rights to warranties. We review existing German contracts to ensure their validity under U.S. law.

IP Strategy and Freedom to Operate for the U.S. Market

Patents, trademarks, and licenses only realize their full value when aligned with your business strategy: A portfolio that is effective in Germany may have gaps in the U.S. market, for example, if competitors have filed for similar intellectual property rights earlier. Before entering the market or launching a product in the U.S., we therefore conduct a freedom-to-operate analysis to determine whether your project infringes on existing U.S. intellectual property rights held by third parties.

We develop an IP strategy tailored to your specific U.S. business model—not to a standard portfolio. We prepare the freedom-to-operate analysis well in advance of market entry so that you can make decisions with a clear understanding of existing risks.

Frequently Asked Questions

What is an office action, and how should I respond to it?

An Office Action is a notice of rejection issued by the USPTO during the examination of your patent application that raises objections regarding, for example, novelty or non-obviousness. You must respond to it within the specified time limit; otherwise, the application will be deemed abandoned. We review the objections and prepare a timely response.

First-to-file or proof of use—which one matters for my U.S. trademark?

Although the U.S. system follows the “first-to-file” principle, it often requires additional proof of use for final registration. Therefore, prior use by a third party can jeopardize your application even if you were the first to file it. We review this before filing the application.

What does a freedom-to-operate analysis provide before entering the U.S. market?

A freedom-to-operate analysis determines whether your product or project infringes on existing U.S. patents or trademarks held by third parties before you enter the market or launch a product. This allows you to identify risks early on and plan your market launch accordingly. We prepare the analysis with your specific business model in mind.