US Trademark Registration for Foreign Companies and Applicants

Do foreign companies need a US attorney?

Yes. The United States Patent and Trademark Office requires that any applicant, registrant or party whose domicile is outside the United States be represented by an attorney licensed to practise law in the United States. The requirement took effect on 3 August 2019 and has not changed since.

This catches people by surprise, because it is unusual. Most trademark offices in the world let a foreign business file on its own, or through a local agent of its choosing. The USPTO does not. If your business is based in London, Toronto, Lagos, Bangalore, Berlin or São Paulo, you cannot file, prosecute or maintain a US trademark without a US-licensed attorney of record.

The reason matters, because it tells you how strictly the rule is applied. The USPTO introduced it in response to a flood of inaccurate and fraudulent filings from abroad — fabricated specimens, applications for marks never used, filings made by people with no authority to make them. The rule exists to put a licensed professional, subject to a bar and to USPTO discipline, between those filings and the register. So it is enforced as a gate, not a formality.

One point of relief worth knowing: the rule asks for a US-licensed attorney in good standing. It does not ask for a trademark specialist, an IP certification, or admission to the patent bar. Any attorney licensed in any US state or territory can serve, provided they actually do the work. The patent bar is a separate requirement that applies to patents only — see patent or trademark, and which rule applies.

Who counts as foreign-domiciled

Domicile is the test, and it is defined differently for people and for companies.

• An individual is foreign-domiciled if their permanent legal place of residence is outside the United States. Not where you travel, not where you hold a mailbox — where you actually live and intend to remain.
• An entity — company, partnership, association — is foreign-domiciled if its principal place of business is outside the United States. That means the headquarters where senior executives direct and control the business, not the place of incorporation.

Two consequences follow, and both trip people up regularly.

A US entity can still be foreign-domiciled. Incorporating a Delaware company does not solve the problem if the people running it, and the business itself, sit in Manchester or Mumbai. The USPTO looks at where the business is actually run.

A US mailing address does not help. A registered-agent address, a virtual office or a friend’s home address is not a domicile. The USPTO asks for domicile specifically, may ask you to prove it, and treats an address supplied to dodge the rule as a serious problem rather than a technicality.

There is one narrow accommodation. Canadian trademark attorneys and agents who are reciprocally recognised may be appointed as additional representatives on a US application. They cannot stand alone. A US-licensed attorney must still be appointed as the attorney of record.

What if you already filed without one

This is the single most common way people arrive here, and the situation is usually recoverable.

If you filed without a US attorney, your application still received a serial number and a filing date. That filing date is worth something: it establishes your priority against later applicants. You have not lost it by filing wrongly.

What happens next is that the examining attorney issues an office action requiring you to appoint US counsel. Everything else in the application freezes behind that requirement. You cannot argue a refusal, amend your description of goods, or respond to anything else until a US-licensed attorney is of record.

The deadline is the thing to take seriously. An office action carries a fixed response period, and if it passes without a proper response, the application is abandoned. Reviving an abandoned application is possible in limited circumstances, costs money, and is not guaranteed. The practical rule: the moment you receive anything from the USPTO, note the response deadline before you do anything else.

We wrote the mechanics up separately in how to appoint a US attorney on an existing application and, if a refusal has already issued, what to do about an office action when you have no US attorney.

Does the requirement ever end?

No. This is the part that is under-explained everywhere else, and it has real cost consequences.

The requirement runs for as long as you are foreign-domiciled and hold the mark:

• filing the application, and every response during examination;
• the Declaration of Use between the fifth and sixth year after registration, and the optional incontestability declaration alongside it;
• renewal every ten years;
• any opposition, cancellation or other proceeding before the Trademark Trial and Appeal Board, whether you started it or someone started it against you;
• assignments, changes of ownership and changes of name.

Missing a maintenance filing is how registrations die. The USPTO cancels marks for failure to file the sixth-year declaration with some regularity, and a cancelled registration cannot be reinstated — you start again, at the back of the queue, against whoever filed in the meantime. When you plan the cost of a US trademark, plan the ten-year cost, not the filing fee.

Madrid Protocol or file directly in the US?

Most firms will not give you a straight answer here, because one of the two answers means not hiring them. So here it is plainly.

The Madrid Protocol lets you file one international application through your home office and request protection in any number of member countries, including the United States. It is administered by WIPO, priced per country, and it means one application instead of many.

Madrid is usually the better route when you want protection in several countries at once, your home registration is solid and settled, and your goods and services description is straightforward. Filing five countries through Madrid is meaningfully cheaper and simpler than five direct national filings.

Direct US filing is usually better when the United States is your main or only market; when your home registration is recent, narrow, or itself vulnerable; or when your goods and services need the specific, granular description that US examiners expect. It is also better if you want the flexibility to amend freely during examination, which a US application gives you and a Madrid extension does not to the same degree.

Two things about Madrid that catch people out. First, for the first five years your US protection is dependent on your home registration: if the home mark falls, the US extension falls with it. This is the “central attack” problem, and it is the single strongest argument for filing directly in the US when America is the market that matters. Second — and this is the part relevant to this page — Madrid does not exempt you from the attorney rule. You can request extension of protection to the US without US counsel, but the moment the USPTO issues a refusal, you must appoint a US-licensed attorney to respond. Given that US examiners refuse a large share of incoming Madrid requests on the description of goods alone, most Madrid applicants end up needing US counsel anyway — just later, and often in more of a hurry.

Your filing basis, and why it matters more than you think

US trademark law is built on use. That single fact makes it different from most of the world, where registration is granted on application and use is someone else’s problem later. Your filing basis is how you tell the USPTO where you stand on use, and choosing it well is where a good attorney earns their fee.

• Use in commerce. You are already selling in the United States, or selling across a US border, under the mark. You must prove it with a specimen.
• Intent to use. You have a genuine, documented intention to use the mark in US commerce but have not started. You get an early filing date now, and you must prove use later before the registration issues.
• Foreign priority. If you filed in your home country within the previous six months, you can claim that earlier date as your US filing date.
• Foreign registration. This one is genuinely useful and widely missed. If you hold a registration in your country of origin, you may be able to register in the United States without proving use in US commerce at all. For a business that has not yet launched in America, this is often the single most valuable option available.

If you take one thing from this page beyond the attorney requirement, take this: a foreign business with a home registration frequently has a cleaner route to a US registration than a US business does. Very few applicants know that before they are told.

Specimens and use in commerce: the usual failure point

A specimen is evidence of the mark as customers actually encounter it in the United States. It is where foreign applications most often fail, and the reasons are consistent.

For goods, the USPTO wants the mark on the product, its packaging, its labels or tags, or on a genuine point-of-sale display — for online sales, a product page showing the mark together with a price and a way to order. A photograph of the product with the mark digitally added is not a specimen. Neither is a rendering, a mock-up, or a design file.

For services, the USPTO wants the mark used in advertising or rendering the service, and the material must make clear what the service actually is. A logo alone on a homepage is routinely refused because it shows the mark without showing the service.

The USPTO scrutinises specimens from foreign applicants closely, for the same reason the attorney rule exists: a wave of digitally-altered specimens came from overseas filing mills, and examiners now look for the signs. Submitting a doctored specimen is not a fixable mistake — it can invalidate the application and, in serious cases, the registration that came from it.

The other frequent failure is the commerce requirement itself. Use must be in commerce that the United States regulates: sales into or within the US, or between the US and another country. Selling only in your home market, however successfully, is not use in US commerce. If that is your position, the answer is not to stretch the facts — it is to file on intent to use, or on your home registration, both of which are designed for exactly your situation.

How long it takes and what it costs

There are three separate costs, and conflating them is how people end up feeling misled.

• USPTO government fees, charged per class of goods or services and set by the USPTO. Additional government fees apply to intent-to-use filings when you later prove use, and to maintenance and renewal filings.
• Attorney fees for preparing and prosecuting the application. We publish ours on the fees page and quote flat, so the number you are told is the number you pay.
• Contingent costs — responding to refusals, amending the application, dealing with an opposition. These cannot be quoted at the start because nobody knows yet whether they will arise. What can be quoted is the price of each, so you are not exposed to an open meter.

Because the USPTO adjusts its fee schedule periodically, we do not print government fee figures here where they could go stale and mislead you. The current schedule is published by the USPTO, and any quote we give states the government fees in force on the day we give it.

On timing, set your expectations in months and years rather than weeks. From filing to a first examiner decision typically runs many months; from filing to registration, in a clean case with no refusal and no opposition, is commonly well over a year. A refusal, an intent-to-use basis, or an opposition each add substantially. Current pendency figures are published and updated by the USPTO, and we will tell you what they are when you file rather than quoting you a number that was true last year.

The practical implication for a foreign business: file earlier than feels necessary. If you plan to enter the US market next year, the application should be in this year.

How to choose your US attorney

Since you are required to hire one, it is worth knowing what separates a good appointment from a bad one. Four questions do most of the work.

Will the attorney of record actually do the work? The USPTO has a standing warning about foreign filing firms that pay a US attorney for the use of their name while the attorney has minimal involvement. Applicants who use those services can lose applications and registrations through no fault of their own. Ask who will sign, who will draft, and who you will speak to. If those are three different answers, ask more. We set out what to check here.

Are the fees flat and complete? Ask for the price of the things that might happen, not only the price of filing — the refusal response, the statement of use, the sixth-year declaration. A quote that covers only the easy path is not a quote.

Will they tell you when not to file? A search that turns up a blocking mark should produce that news early, before you have paid for an application that cannot succeed. An attorney who has never talked a client out of filing is not searching properly.

Can they work across your time zone and in plain language? You will be relying on this person to explain a refusal accurately and quickly, sometimes against a deadline, from several time zones away. That is a practical requirement, not a nicety.