U.S. Trademark Registration for Foreign Associates: Your Essential U.S. Partner

Why Foreign Attorneys Need a U.S. Partner for Trademark Filings

As a foreign attorney or IP professional advising clients on international trademark protection, you're likely familiar with the complexities of cross-border intellectual property law. When your clients need trademark protection in the United States—one of the world's largest consumer markets—they face a mandatory legal requirement that creates an opportunity for professional collaboration.

Since August 2019, all foreign-domiciled trademark applicants must be represented by a U.S.-licensed attorney when filing with the United States Patent and Trademark Office. This isn't simply a recommendation—it's a binding requirement that applies to every trademark application, renewal, assignment, and office action response filed by individuals and companies based outside the United States.

Yomtobian Law specializes in serving as U.S. counsel for foreign associates and their clients, providing seamless trademark filing services that protect your client relationships while ensuring full USPTO compliance.

Understanding the U.S. Attorney Requirement

Who Needs U.S. Representation?

Foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings must appoint a U.S.-licensed attorney. This includes:

• Companies headquartered outside the United States

• Individuals whose permanent residence is outside the U.S.

• All Canadian applicants (the initial exemption no longer applies)

• Entities filing through the Madrid Protocol who receive office actions

• Any party to trademark opposition or cancellation proceedings

The term "domicile" refers to an individual's permanent legal residence or a company's principal place of business where senior executives direct operations. Even if your client has U.S. operations, if their headquarters is abroad, they require U.S. counsel.

Why This Requirement Exists

The USPTO implemented this requirement to combat unauthorized practice of law and improve the accuracy and integrity of the trademark register. The office identified patterns of fraudulent applications and improper submissions from foreign filers receiving inadequate legal guidance. By requiring U.S. licensed attorneys, the USPTO ensures that:

• Applications comply with U.S. trademark law standards

• Specimens of use meet legal requirements

• Proper parties sign declarations under U.S. law

• Office action responses address substantive legal issues

• The trademark register maintains its integrity

The USPTO has already terminated over 52,000 fraudulently filed trademark applications and registrations, demonstrating the serious consequences of non-compliance.

How Yomtobian Law Serves Foreign Associates

Comprehensive U.S. Trademark Filing Services

As your U.S. partner, I handle all aspects of trademark prosecution before the USPTO:

Application Preparation and Filing

• Conducting comprehensive trademark clearance searches

• Selecting the appropriate filing basis (use in commerce, intent-to-use, Section 44(d), Section 44(e), or Madrid Protocol)

• Drafting precise identification of goods and services

• Preparing specimens that meet USPTO requirements

• Filing applications through the USPTO's electronic system

Office Action Responses

• Analyzing USPTO examining attorney objections

• Drafting legal arguments addressing likelihood of confusion rejections

• Responding to descriptiveness and distinctiveness issues

• Handling specimen refusals and technical deficiencies

• Meeting all response deadlines (typically six months, non-extendable for certain requirements)

Trademark Maintenance and Enforcement

• Filing Section 8 declarations between the 5th and 6th year after registration

• Filing combined Section 8 and 9 renewal declarations

• Recording assignments and name changes

• Handling trademark opposition and cancellation proceedings

• Advising on infringement matters and enforcement strategies

Filing Basis Options for Foreign Clients

Your clients have several strategic options when filing in the United States:

Section 44(e) - Foreign Registration Basis Clients with existing trademark registrations in their home country can file based on that foreign registration, without initially proving use in U.S. commerce. Benefits include:

• No need to prove U.S. use at registration, with up to five years to commence use after registration

• Streamlined application process

• Protection while planning U.S. market entry

• Must be registered in the applicant's country of citizenship or incorporation

Section 44(d) - Foreign Application Basis Clients can claim priority to a foreign trademark application filed within six months, securing earlier priority dates in the U.S.

Intent-to-Use Basis For clients planning U.S. expansion without existing foreign registrations, the intent-to-use basis allows them to secure trademark rights before actual market entry.

Use in Commerce Basis For clients already selling in the United States, direct filing based on current use provides the fastest path to registration.

The Madrid Protocol Option

The Madrid Protocol offers a convenient way to file one application to register trademarks in more than 120 countries. Key considerations for your clients:

Advantages:

• Single application, one language, one set of fees for protection in 131 countries

• Centralized management through WIPO

• Valid for 10 years with indefinite renewal every decade

• Can add additional countries through subsequent designations

Important Limitations: The USPTO requires U.S. attorney representation once any office action is issued for Madrid Protocol applications. While clients can initially file through their home trademark office, they must engage U.S. counsel to respond to USPTO objections.

The Referral Partnership Model

How Our Collaboration Works

When you refer clients to Yomtobian Law for U.S. trademark registration, the process is straightforward and professional:

1. Initial Consultation: You introduce your client and their trademark needs. I provide a preliminary assessment and fee quote.

2. Direct Client Service: I work directly with your client on all USPTO matters while keeping you informed of significant developments.

3. Transparent Communication: You receive copies of all substantive correspondence and can participate in strategy discussions as desired.

4. Referral Recognition: I acknowledge your role in the client relationship and never compete for your client's non-U.S. trademark matters.

5. Referral Compensation: We can discuss appropriate referral arrangements that comply with professional responsibility rules in both jurisdictions.

Why Partner with Yomtobian Law?

Specialized Expertise I focus exclusively on U.S. trademark law, staying current on USPTO policy changes, TTAB precedent, and examination trends that affect foreign applicants.

Efficient Processing The typical timeline for U.S. trademark registration is 8-12 months, though I work efficiently to minimize delays through comprehensive initial applications that anticipate examiner concerns.

Cost-Effective Solutions As a solo practitioner, I offer competitive rates without the overhead of large firms, making U.S. trademark protection more accessible for your clients.

Responsive Service Your clients receive direct attorney communication throughout the process, not paralegal intermediaries. I understand the importance of meeting international deadlines and time zone considerations.

Cultural Competency I regularly work with foreign clients and understand the nuances of translating trademark concepts across legal systems and languages.

Critical Compliance Issues for Foreign Filers

Common Pitfalls to Avoid

Foreign applicants face unique challenges in U.S. trademark prosecution. Office actions can set applications back months, and proper response strategies aren't always clear. Common issues include:

Specimen Problems U.S. law requires specimens showing the mark as actually used in commerce. Acceptable specimens for goods include packaging, labels, or tags. For services, specimens must show the mark used in the sale or advertising of services. Many foreign applicants submit promotional materials that don't meet the legal standard.

Identification of Goods/Services The USPTO requires specific, definite identification using terminology from the Trademark ID Manual. Generic or overly broad descriptions are rejected.

Domicile Address Accuracy All applicants must provide their true domicile address, not a post office box or "care of" address. This is used to determine whether U.S. counsel is required.

Declaration Signing Authority Only authorized signatories can sign declarations on behalf of corporate applicants. The USPTO scrutinizes signing authority, especially for foreign entities.

Enforcement and Penalties

The USPTO takes compliance seriously. The Office of Enrollment and Discipline investigates unauthorized practice of law and can sanction attorneys who fail to conduct reasonable inquiry before filing. Applications filed without proper U.S. representation face:

• Suspension until U.S. counsel is appointed

• Abandonment if the requirement isn't satisfied

• Potential invalidity of registrations obtained improperly

• Loss of filing dates and priority

Strategic Considerations for Your Clients

When to File in the United States

Advise your clients to pursue U.S. trademark registration when:

• They're currently selling products or services in the U.S.

• They're planning U.S. market entry within the next 3-5 years

• They want to prevent competitors from registering confusingly similar marks

• They're seeking investor funding and need comprehensive IP protection

• They're licensing brands to U.S. companies

• They're defending against counterfeiting on U.S.-based e-commerce platforms

Cost Considerations

Help your clients understand the investment required:

USPTO Filing Fees The USPTO charges $350 per class of goods/services for electronic applications. Most applications cover 1-3 classes.

Attorney Fees U.S. attorney fees vary based on application complexity, but comprehensive service including search, application preparation, and one office action response typically ranges from $1,500-$3,000 per application.

Total Investment For a single-class application, clients should budget $2,000-$3,500 for complete prosecution through registration.

Madrid Protocol Fees Madrid applications involve WIPO fees plus individual designation fees for each country, calculated in Swiss Francs.

Timeline Expectations

Current USPTO processing times show initial examination occurring 8-10 months after filing, with the entire process taking 12-18 months for uncomplicated applications. Applications requiring office action responses may take longer.

Building a Successful Referral Relationship

What I Need From You

To serve your clients effectively, I appreciate:

• Complete information about the client's business and trademark use

• Copies of any existing foreign registrations or applications

• Clear communication about the client's goals and timeline

• Introduction to key client contacts

• Any cultural or communication preferences I should know

What You Can Expect From Me

I commit to:

• Prompt response to inquiries (typically within 24 hours)

• Regular status updates on application progress

• Advance notice of deadlines requiring client action

• Transparent fee structures with no surprise charges

• Professional courtesy toward your client relationship

• Collaborative problem-solving on complex issues

Getting Started

If you have clients who need U.S. trademark protection, I invite you to reach out to discuss how we can work together. I actively file trademarks for foreign associates and their clients, providing the U.S. legal representation required by the USPTO while respecting your existing attorney-client relationship.

Contact Yomtobian Law today to:

• Discuss specific client needs

• Request fee quotes for trademark services

• Explore referral arrangement options

• Schedule an introductory call

Let's build a referral partnership that serves your clients' U.S. trademark needs with excellence and professionalism.

Frequently Asked Questions

Q: Can my client file their U.S. trademark application themselves without a U.S. attorney?

A: No. Since August 2019, all foreign-domiciled applicants must be represented by a U.S.-licensed attorney for all trademark filings with the USPTO. This includes initial applications, office action responses, renewals, assignments, and any other documents filed with the trademark office. Attempting to file without U.S. counsel will result in suspension and potential abandonment of the application.

Q: Does this requirement apply to Madrid Protocol applications?

A: Partially. Foreign applicants can initially designate the United States through the Madrid Protocol via their home trademark office without U.S. counsel. However, once the USPTO issues any office action or provisional refusal, U.S. attorney representation becomes mandatory. Given that most Madrid applications receive some form of office action, clients should plan to engage U.S. counsel from the start.

Q: What if my client already has a pending U.S. application that was filed before hiring a U.S. attorney?

A: Applications filed before August 3, 2019, were grandfathered under the old rules. However, foreign applicants can still file initial applications and receive a serial number and priority date without U.S. counsel, but they must appoint U.S. counsel to respond to any office actions. Failure to do so results in abandonment. I recommend engaging counsel immediately upon receiving any USPTO correspondence.

Q: How long does U.S. trademark registration take?

A: The USPTO examination process typically takes 8-12 months from filing to initial review by a trademark examining attorney. If no issues are found, publication for opposition follows, with a 30-day opposition period. Assuming no opposition, registration issues approximately 3 months after publication. Total timeline for straightforward applications: 12-18 months. Complex applications or those requiring substantive responses may take 18-24 months or longer.

Q: Can my client use their existing foreign trademark registration to file in the U.S.?

A: Yes, through Section 44(e) of the Trademark Act. Clients with valid trademark registrations in their country of citizenship or incorporation can file based on that foreign registration. This basis allows registration without proving use in U.S. commerce, though use must commence within five years after U.S. registration to maintain the trademark. The U.S. application must be for the identical mark and cannot cover broader goods/services than the foreign registration.

Q: What happens if my client's home country registration is cancelled during the first five years?

A: If a foreign registration serving as the basis for a U.S. application or registration is cancelled within five years of the U.S. international registration date, the U.S. registration is also cancelled. However, the Madrid Protocol allows transformation into national applications in each designated country, preserving the original priority date. This underscores the importance of maintaining foreign registrations during the dependent period.

Q: Does my client need a U.S. address to apply for a trademark?

A: No, foreign applicants can use their foreign address as their domicile address. The USPTO requires the true domicile address to determine whether U.S. attorney representation is mandatory. The U.S. attorney's address is used for official correspondence. Clients do not need to form a U.S. corporation or maintain a U.S. mailing address.

Q: How much does U.S. trademark registration cost?

A: USPTO government filing fees are $350 per class of goods/services for electronic applications. Attorney fees vary but typically range from $1,500-$3,000 for comprehensive service including preliminary search, application preparation, filing, and response to one office action. Total cost for a single-class application generally falls between $2,000-$3,500. Multi-class applications cost more due to per-class government fees.

Q: What's the difference between filing directly with the USPTO versus using the Madrid Protocol?

A: The Madrid Protocol allows filing one application through your home trademark office to seek protection in over 120 countries simultaneously. It's cost-effective for clients seeking protection in multiple jurisdictions. Direct USPTO filing may be preferable for clients focusing primarily on the U.S. market, those wanting earlier registration dates, or those seeking to avoid the five-year dependency period. Each approach has strategic advantages depending on the client's business goals.

Q: Can my client expand their U.S. trademark registration later to cover additional products or services?

A: No. U.S. trademark registrations are limited to the specific goods/services listed in the registration. To cover additional goods/services, the client must file a new trademark application. However, if filing through the Madrid Protocol, clients can file subsequent designations to seek protection for additional goods or services included in the international registration but not initially designated for the U.S.

Q: What ongoing maintenance is required for U.S. trademark registrations?

A: U.S. trademark registrations require periodic maintenance filings:

• Section 8 Declaration of Use: Due between the 5th and 6th year after registration, with proof that the mark remains in use in commerce

• Section 8 & 9 Combined Declaration and Renewal: Due between the 9th and 10th year after registration

• Subsequent renewals: Every 10 years thereafter

Failure to file these documents results in cancellation of the registration. The USPTO does not send reminders, so maintaining a trademark docketing system is essential.

Q: How do referral fees work for foreign attorneys referring U.S. trademark work?

A: Referral arrangements must comply with professional responsibility rules in both jurisdictions. Many U.S. states permit referral fees between attorneys if disclosed to the client and the total fee is reasonable. I work with foreign associates to establish compliant referral structures that recognize your role in the client relationship. Specific arrangements are discussed confidentially during our initial consultation.

Q: What if my client receives a cease and desist letter regarding trademark infringement in the U.S.?

A: U.S. trademark infringement disputes require immediate attention from U.S. counsel familiar with federal trademark law and civil litigation. I can evaluate cease and desist letters, assess infringement claims, negotiate settlements, and represent clients in USPTO opposition and cancellation proceedings. For federal court litigation, I work with experienced trademark litigators to ensure comprehensive representation.

Q: Can my client register a trademark in the U.S. if they're not yet selling there?

A: Yes, through intent-to-use applications. Foreign applicants can file based on a good-faith intent to use the mark in U.S. commerce, even if they haven't yet made sales. After the application is approved, the USPTO issues a Notice of Allowance. The applicant then has six months (extendable to three years) to begin use and file a Statement of Use with proof of actual commerce. This allows clients to secure trademark rights before market entry.

Q: Are there any fast-track options for urgent trademark applications?

A: The USPTO does not offer expedited examination for standard trademark applications. However, properly prepared applications with comprehensive initial submissions tend to move more quickly through examination. I focus on thorough initial filings that anticipate examiner concerns, reducing the likelihood of office actions that extend the process.

Q: What happens if someone opposes my client's trademark application?

A: After a trademark application is approved for publication, it appears in the USPTO's Trademark Official Gazette for 30 days. During this period, anyone who believes they would be harmed by registration can file an opposition with the Trademark Trial and Appeal Board (TTAB). Opposition proceedings are similar to federal court litigation and require experienced trademark counsel. I represent clients in TTAB proceedings, including oppositions, cancellations, and concurrent use proceedings.

Q: Does U.S. trademark registration provide worldwide protection?

A: No. Trademark rights are territorial. U.S. registration provides protection only within the United States. Clients seeking international protection should consider the Madrid Protocol for efficient multi-country filing, or direct national applications in priority markets. I can coordinate with your firm to ensure comprehensive global trademark protection strategies.