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US Trademark — BASEWORKS

Created 2026-04-23
Tags legaltrademarkbaseworksus

US protection is held via the Madrid Protocol, not as a direct USPTO national registration. IR 1382549 designates the US, and the USPTO issued US Registration № 5543175 as the extension of protection.

  • US Registration №: 5,543,175
  • US Serial №: 79224105
  • US Registration Date: 21 August 2018
  • Madrid IR №: 1382549
  • IR Registration Date: 21 September 2016
  • Basic mark: EUIPO 013914957 (see eu)
  • Holder: Patrick Oancia-Prieto (Berlin, Germany)
  • Mark: BASEWORKS (figurative, sky blue + dark grey)
  • Current classes in US: 41 only (following partial invalidation)
  • Next action: renew IR 1382549 by 21 September 2026 (see plan below)

Original US scope (2018 grant): Classes 09, 35, 39, 41, 42, 44. Current US scope (post-2026): Class 41 only.

Classes dropped for non-use: 09 (software), 35 (marketing), 39 (travel), 42 (design/tech), 44 (nutrition/health counseling). These were aspirational or legacy-era classes; Baseworks’ actual commerce is educational services (Class 41). Dropping them was the correct and intentional outcome of the 2024 Section 71 declaration.

DateEvent
07 Apr 2015EU basic application filed (EUIPO 013914957)
29 Jul 2015EU basic mark registered
21 Sep 2016Madrid IR 1382549 registered
04 Jan 2018US designation entered
08 Feb 2018USPTO provisional refusal (total) — overcome
21 Aug 2018USPTO grant — registration 5543175 (all 6 classes)
20 Dec 2018WIPO records US Statement of Protection
05 Aug 2024Stone Law, P.C. engaged for Section 71 declaration (fixed fee $600)
19 Aug 2024Section 71 filed with USPTO via TEAS — Class 41 only
10 Feb 2025USPTO Notice of Acceptance under Section 71 — Class 41 only
07 Apr 2026WIPO receives USPTO invalidation decision
23 Apr 2026WIPO Rule 19(2) notification of invalidation recording
21 Sep 2026IR renewal deadline

Documented strategy: keep the IR, narrow to Class 41, renew via WIPO directly.

  • IR 1382549’s only live designation is the US, which is already Class 41-only.
  • Narrowing the IR master scope saves ~CHF 300 in supplementary fees and aligns the international record with actual protection.
  • Keeping the IR (vs. letting it lapse and filing direct US national) preserves Madrid flexibility to add new country designations later at low cost.

The Madrid basic fee covers up to 3 classes, so keeping 09 and 41 together would have cost the same at renewal as keeping only 41. The decision to narrow to 41 alone turns on the nature of the Practice Platform and the movement-tracking roadmap:

  • Practice Platform is subscription-only, nothing downloadable. Users access educational content via the platform; no software is sold or distributed. That characterises it as a Class 41 service (delivery of educational content), not a Class 09 product (downloadable software).
  • Movement tracking intent is to leverage existing smartphone camera tech, not to develop proprietary trackers, VR software, or wearable hardware. Any future feature would be an adjunct layered onto existing consumer-device capability, still delivered as part of the Class 41 educational service.
  • Therefore Class 09 has no concrete future use case under the Baseworks brand, and the optionality is not worth preserving.

If this calculus changes (standalone products, wearables, or licensed software), a future separate trademark filing is the right way to add Class 09, not holding it speculatively across the Madrid IR for ten years.

  • Nutrition counseling under Baseworks is ruled out (not a direction the brand is taking).
  • Health-adjacent counseling may happen in future but the brand it would trade under is undecided. If it ends up under Baseworks, a separate filing is cleaner than preserving optionality now.
  • EU basic mark retains Class 44 through 2035 — so European health-adjacent coverage already exists even without extending it via Madrid.
  1. Before mid-September 2026: file WIPO MM6 (cancellation of classes) or MM8 (limitation) to narrow IR to Class 41.
    • Fee: approximately CHF 177 (MM8 limitation)
    • Done via WIPO’s online portal; no counsel required
  2. Before 21 September 2026: file e-Renewal for the narrowed IR.
    • Fee estimate: base CHF 653 + US individual designation fee ~CHF 420 = ~CHF 1,073
    • New term: 21 Sep 2026 → 21 Sep 2036
  3. Optional sanity check: copy Jason Stone on the renewal strategy before filing, as a second pair of eyes. Not required for the filing itself.
  • Do not let the IR lapse unless the decision is to go fully standalone national (Path B). That would require filing a new direct USPTO national, re-examination, and accepting the risk of a lost priority date.
  • Do not attempt to re-add classes 09/35/39/42/44 at renewal; they’ve been invalidated and would need a fresh filing.

Stone Law, P.C. — Toms River, NJ

  • Jason Stone, jstone@stoneslaw.net
  • Engaged 5 Aug 2024 for Section 71 Declaration
  • Fixed fee $600 (of $775 list), billed to Ceva Consulting / pat@cevaco.co
  • Scope ended at Notice of Acceptance 10 Feb 2025
  • Current contact status: email sent 2026-04-23 (see below) confirming WIPO notification is informational downstream of his filing

Sent from pat@cevaco.co, replied into the existing Section 71 thread. Purpose: confirm today’s WIPO Rule 19(2) letter is informational, requires no response, and flag any procedural housekeeping before September renewal. WIPO invalidation PDF attached. Awaiting reply.

Per USPTO Notice of Acceptance, the next declaration of continued use is due between the 9th and 10th year after the original US registration date (21 August 2018), i.e., between 21 August 2027 and 21 August 2028. For Class 41 only. Re-engage Stone Law ~6 months ahead.

All in Baseworks Team Drive / Trademark / US /:

  • WIPO-IR1382549-invalidation-2026-04-23.pdf — the Rule 19(2) notification
  • WIPO-IR1382549-invalidation-coverletter-2026-04-23.pdf — accompanying cover letter
  • WIPO-IR1382549-renewal-reminder-2026-02-27.pdf — Madrid renewal reminder
  • Stone-Law-engagement-2024-08-05.pdf — fee agreement and signatures
  • USPTO Notice of Acceptance (10 Feb 2025) — in Gmail thread with TMOfficialNotices@uspto.gov, not yet archived as PDF in Drive