Does a foreign company need a U.S. attorney to file a U.S. trademark?

Companies based outside the United States often reach the U.S. market through online sales, distribution deals or touring artists before they think about U.S. trademark filings. When they do file, the first question is usually who is allowed to file for them. This page explains the USPTO's representation rule, the filing routes open to foreign owners and what to prepare. For the U.S. process in general, see our main copyright and trademark law page.

How a foreign company files a U.S. trademark, step by step

1. Confirm your domicile. For a company, that is the street address of the headquarters where senior executives direct the business (TMEP 601.01).
2. Appoint a qualified U.S. attorney. The attorney gives the USPTO contact details, bar state, bar number where one exists, year of admission and a statement of good standing; the bar details are not public. Allow time, because the USPTO's records must show the attorney before certain filings.
3. Pick the filing route. File directly with the USPTO on use, intent to use or a home-country filing, or through WIPO under the Madrid Protocol (the table below compares them). A priority claim must be made within six months of the first foreign filing (15 U.S.C. 1126(d)).
4. File and pay. The USPTO's base fee is $350 per class for a direct filing; a Madrid request designating the United States costs $600 per class, paid through WIPO.
5. Examination. An examining attorney reviews the application exactly as for a U.S. owner. Office actions on direct filings must be answered in three months, extendable once by three months for $125; Madrid applicants get six months with no extension (37 CFR 2.62). If a deadline slips, see what to do after a missed office action deadline.
6. Publication and opposition. An approved mark is published and can be opposed within 30 days, a window that can be extended on request (15 U.S.C. 1063(a), 1141h(a)(2)). Our page on how a TTAB opposition runs explains what follows if someone objects.
7. Registration and upkeep. A declaration of use is due in the year before the sixth anniversary of registration, under Section 8 for direct filings or Section 71 for Madrid-based registrations, at $325 per class (15 U.S.C. 1058, 1141k).

What exactly does the rule require?

The rule is short: "An applicant, registrant, or party to a proceeding whose domicile is not located within the United States or its territories must be represented by an attorney" qualified to practice before the USPTO, and the USPTO cannot help choose one (37 CFR 2.11(a)). The USPTO's examination manual defines a qualified U.S. attorney as an active member in good standing of the bar of the highest court of a U.S. state, commonwealth or territory, or the District of Columbia (TMEP 601).

The requirement covers new applications, filings to maintain a registration, and proceedings before the Trademark Trial and Appeal Board. It applies to Canadian filers too. According to the USPTO, Canadian patent agents may no longer represent Canadian trademark filers in new matters, and while eligible Canadian trademark attorneys and agents can still be appointed alongside U.S. counsel, the USPTO corresponds only with the U.S.-licensed attorney.

Who counts as foreign-domiciled?

Domicile means the permanent legal residence of a person or the principal place of business of a company (37 CFR 2.2(o)). For a company, the USPTO describes this as the headquarters where senior executives or officers ordinarily direct and control the business. Under that test, a U.S. sales office or warehouse does not by itself make a company U.S.-domiciled if the business is directed from abroad.

Every applicant and registrant, foreign or not, must give and keep current a domicile address, because that address is how the USPTO decides whether the rule applies. The USPTO says a P.O. box usually is not acceptable as a domicile address. Where an application has joint owners and any one of them is domiciled in the United States, the owners are not required to appoint U.S. counsel unless the U.S. address appears to be incorrect (TMEP 601).

What happens if a foreign owner files without a U.S. attorney?

The examining attorney or post-registration examiner issues an office action requiring the owner to appoint a qualified U.S. attorney and provide the attorney's bar information (TMEP 601.01(a)). An unanswered office action leads to abandonment of the application. At the Board, a foreign party without U.S. counsel will generally see the proceeding suspended with an order setting a time to retain one.

The USPTO has also warned that some U.S. attorneys receive offers of payment to let others use their identification in filings they did not prepare. The agency treats this as an attempt to get around the rule and lists sanctions that include striking the filing and terminating the proceeding. A foreign owner should know who its attorney is and deal with that person directly.

Which filing routes are open to a foreign company?

Applications under Section 44 or the Madrid Protocol do not need a specimen to register, but every registrant must later submit specimens showing use to keep the registration alive. Madrid applicants file with the International Bureau of the World Intellectual Property Organization, which transmits the request to the USPTO. Because WIPO's forms have no place to name a U.S. attorney, the USPTO requires U.S. counsel for a Madrid applicant from the first refusal or office action onward.

Are the examination rules and fees the same as for U.S. companies?

Substantively, yes. A Madrid request for protection in the United States is examined as an application for the Principal Register and can be opposed like any other (15 U.S.C. 1141h(a)). The same likelihood-of-confusion analysis applies, explained in our guide to responding to a likelihood-of-confusion refusal. The procedural differences are real, though. A Madrid applicant gets six months to answer an office action with no extension, rather than three months plus an optional three-month extension. Fees also differ by route: the USPTO's base application fee is $350 per class for applications filed directly with it, while the fee for a Madrid application designating the United States, paid through WIPO, is $600 per class.

What changes the answer

• A U.S. co-owner. If any one joint owner is domiciled in the United States, the owners need not appoint U.S. counsel unless the U.S. address appears incorrect (TMEP 601).
• A move to the United States. An owner with a U.S. street address as its domicile may, but generally need not, use an attorney. The domicile must be kept current with the USPTO (37 CFR 2.189; TMEP 601.01(b), 601.01(d)).
• A clean Madrid application. If a Madrid application can be approved for publication on first review, the examiner should not require an attorney at all (TMEP 601.01(a)).
• Who your home-country representative is. Only Canadian trademark attorneys and agents recognized by the USPTO can work on U.S. filings, and only for clients located in Canada. Other foreign attorneys and agents, including foreign patent attorneys, may not prepare or sign U.S. trademark filings (TMEP 602.03, 602.03(a), 602.03(b)).
• Registration at home. A Section 44 filer cannot register until the mark is registered in its country of origin, unless it alleges use in U.S. commerce (15 U.S.C. 1126(c)).
• Disputing the requirement. If an office action maintains only the attorney or domicile requirements, the only route to review is a petition to the Director (37 CFR 2.11(f)).

A worked example

Common mistakes

• Listing a U.S. warehouse, P.O. box or forwarding address as the domicile. Domicile is where the business is directed, and a "care of" or mail-forwarding address generally cannot serve (TMEP 601.01).
• Letting an unrecognized home-country agent prepare the U.S. filing. The USPTO treats documents from a foreign attorney or agent who is not recognized as filed by an improper party (TMEP 602.03(b)).
• Buying a service that borrows a U.S. attorney's name. The USPTO has warned about offers to pay for attorney identification information, and its sanctions include striking the filing and terminating the proceeding.
• Missing the six-month priority window. After six months, the U.S. application can no longer claim the earlier foreign date (15 U.S.C. 1126(d)(1)).
• Planning on an extension in a Madrid case. The six-month response period for a Section 66(a) application cannot be extended (37 CFR 2.62).
• Assuming a registration won without U.S. use can be kept without it. Section 44 and Madrid registrants must later swear to use in U.S. commerce and file specimens, or show excusable nonuse (15 U.S.C. 1058, 1141k(b)); our page on trademark specimen refusals shows what a good specimen looks like.

What to do this week

1. Write down the company's exact legal name, entity type and headquarters street address, the place senior executives direct the business.
2. List every home-country application with its number and filing date, and mark any filed within the last six months.
3. Decide between a direct filing and Madrid using the table above, and note whether the mark is already in use in U.S. commerce.
4. Search the USPTO's records for similar marks; if a U.S. filing for a name you use turns up, start with what to do when someone files for your brand name.
5. Draft the goods and services in the USPTO's ID Manual terms, which avoids the $200 per class free-form surcharge.
6. Appoint a qualified U.S. attorney early enough for the appointment to be recorded before any deadline.
7. Calendar the declaration of use between the fifth and sixth years after registration, covered in when to renew a federal trademark.

Frequently asked questions

Can our Canadian trademark agent handle the U.S. filing?

Partly. A Canadian trademark attorney or agent recognized by the USPTO can prepare and sign filings for clients located in Canada, but a qualified U.S. attorney must also be appointed, files the documents and receives the USPTO's correspondence (TMEP 602.03(a)). The recognized agent cannot act for a Canadian who lives in the United States.

Will our headquarters address be public?

It does not have to be. Most USPTO forms let you give a public mailing address and a separate domicile address that is hidden, as long as the two addresses differ and the domicile goes in the dedicated domicile fields (TMEP 601.01(e)).

Do we have to sell in the United States before we can register?

Not under Section 44(e) or Madrid, but the application must state a bona fide intention to use the mark in U.S. commerce (15 U.S.C. 1126(e), 1141f(a)). Use matters later, because a registration not used for long enough can be challenged, as our page on losing a trademark through nonuse explains.

How long can the USPTO take to refuse a Madrid application?

The USPTO must send any refusal based on examination to WIPO within 18 months after WIPO transmits the request, or note that an opposition may follow. If it misses that window, the request cannot be refused and a certificate of extension of protection issues (15 U.S.C. 1141h(c)).

Does the rule apply to a foreign band or artist?

Yes. The rule turns on domicile, not on the type of owner, so an individual whose permanent home is abroad also needs a qualified U.S. attorney (37 CFR 2.2(o), 2.11(a)). Our page on trademarking a band or artist name covers the questions that come with performing names.

U.S. companies going the other way, from a U.S. filing to protection abroad, should read protecting a U.S. trademark in other countries.

Shreepal J. Zala is a U.S.-licensed attorney, admitted in Georgia, and Zala IP Law assists businesses and individuals across the United States and internationally with trademark filings, office action responses and proceedings. To discuss a U.S. filing, request a consultation or call 404-313-1701.