U.S. Trademark Registration for Foreign Companies and Individuals
- Alan Yomtobian
- Dec 31, 2025
- 13 min read
Accessing the World's Largest Consumer Market
The United States represents the world's largest consumer market, with GDP exceeding $25 trillion and consumer spending accounting for approximately 70% of economic activity. For foreign companies expanding internationally, securing trademark protection in the U.S. market is essential to capturing market share, preventing counterfeiting, and building brand recognition among American consumers.
However, U.S. trademark law presents unique requirements and procedures that differ significantly from trademark systems in other jurisdictions. Understanding these requirements—particularly the mandatory U.S. attorney representation rule implemented in 2019—enables foreign applicants to navigate registration efficiently while avoiding costly mistakes that could result in application refusal or registration invalidation.
The Mandatory U.S. Attorney Requirement
Understanding the 2019 Rule Change
On August 3, 2019, the USPTO implemented a rule requiring all foreign-domiciled trademark applicants, registrants, and parties to TTAB proceedings to be represented by attorneys licensed to practice law in the United States. This requirement, codified in 37 C.F.R. § 11.14, fundamentally changed how foreign applicants access the U.S. trademark system.
Prior to this rule, foreign applicants could file trademark applications directly with the USPTO without U.S. counsel. The USPTO identified substantial problems with foreign filings, including fraudulent applications containing false claims of use, improper specimens, and inadequate legal compliance. The attorney requirement was implemented to improve application accuracy and trademark register integrity.
Who Must Have U.S. Counsel?
The attorney requirement applies to all foreign-domiciled applicants, registrants, and parties, defined as:
Foreign-Domiciled Individuals: Anyone whose permanent legal residence is outside the United States
Foreign-Domiciled Businesses: Companies whose principal place of business—where senior executives direct and control company operations—is outside the United States
Canadian Applicants: The initial exemption for Canadian applicants no longer applies; all Canadian individuals and businesses must have U.S. counsel
The requirement applies regardless of whether applicants have U.S. operations, subsidiaries, or offices. If the principal place of business is outside the United States, U.S. counsel is mandatory.
U.S. attorney representation is required for:
All new trademark applications filed by foreign-domiciled applicants
Responses to office actions for applications filed by foreign applicants
Statements of Use for intent-to-use applications
Maintenance filings including Section 8 and 9 documents
Assignments, amendments, and all other documents filed with the USPTO
Trademark Trial and Appeal Board proceedings including oppositions and cancellations
For Madrid Protocol applications, foreign applicants can initially designate the United States through 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.
Consequences of Non-Compliance
Applications filed by foreign-domiciled applicants without U.S. counsel will be suspended by the USPTO. Examining attorneys will issue notices requiring appointment of U.S.-qualified attorneys within specified deadlines. Failure to appoint counsel results in abandonment, forfeiting filing dates and priority rights.
For applications filed before August 3, 2019, the rule applies to any documents filed after the effective date, including office action responses and maintenance documents. Even applicants who filed without counsel before the rule change must appoint U.S. attorneys for all subsequent filings.
Filing Bases Available to Foreign Applicants
U.S. trademark law provides multiple filing bases, several specifically designed to accommodate foreign applicants who may not yet have established U.S. commerce.
Section 44(e): Foreign Registration Basis
Under 15 U.S.C. § 1126(e), foreign applicants can base U.S. applications on existing trademark registrations in their home countries. Requirements include:
Home Country Registration: The mark must be registered in the applicant's country of citizenship (for individuals) or country of incorporation or organization (for businesses). The registration must be valid and current.
Identical Mark: The U.S. application must be for the identical mark registered in the home country. Minor variations may be acceptable, but substantial differences prevent Section 44(e) filing.
Same or Narrower Goods/Services: The U.S. application cannot cover broader goods or services than the foreign registration. It can cover the same items or a subset, but cannot expand beyond the foreign registration's scope.
Country Designation: Applications must specify the country of foreign registration and provide registration numbers and dates.
Section 44(e) applications offer significant advantages for foreign applicants:
No U.S. Use Required for Registration: Unlike standard U.S. applications requiring use in U.S. commerce before registration issues, Section 44(e) applications can register without proving U.S. use. However, use must commence within specified timeframes to maintain registration.
Streamlined Process: The foreign registration serves as evidence supporting registrability, potentially reducing office action likelihood for descriptiveness or other objections.
Five-Year Dependency Period: During the first five years after U.S. registration, if the foreign registration is cancelled, the U.S. registration is also cancelled. After five years, this dependency ends and U.S. registrations become independent.
Section 44(d): Foreign Application Priority
Under 15 U.S.C. § 1126(d), foreign applicants can claim priority to foreign trademark applications filed within the preceding six months. This provision implements the Paris Convention for the Protection of Industrial Property, which provides priority rights among member countries.
Requirements include:
Pending Foreign Application: The applicant must have filed a trademark application in a Paris Convention member country within six months before filing the U.S. application.
Same Mark and Goods/Services: The U.S. application must be for the same mark covering the same or narrower goods/services as the foreign application.
Priority Claim: The U.S. application must explicitly claim priority to the foreign application, providing application numbers and filing dates.
Priority claiming under Section 44(d) makes the U.S. filing date relate back to the foreign application date for priority purposes. This prevents intervening applications filed between the foreign and U.S. filing dates from blocking registration, securing earlier priority rights than would be available through direct U.S. filing after foreign filing.
Intent-to-Use Applications for U.S. Trademark Registration for Foreign Companies and Individuals
Foreign applicants can file intent-to-use applications under 15 U.S.C. § 1051(b), just like U.S. applicants. Requirements include bona fide intent to use the mark in U.S. commerce—concrete plans to enter the U.S. market, not mere speculation about possible future activities.
Intent-to-use applications proceed through examination and, if approved, receive Notices of Allowance. Registration doesn't issue until applicants file Statements of Use proving actual use in U.S. commerce. The USPTO allows up to three years from Notice of Allowance to commence use and file Statements of Use.
Once Statements of Use are filed and approved, registration priority dates back to the original application filing date, securing earlier rights than would be available by waiting to file until after U.S. market entry.
Use in Commerce Applications
Foreign applicants already selling goods or providing services in U.S. commerce can file standard use-based applications under 15 U.S.C. § 1051(a). These applications proceed directly to registration once examination is complete, without requiring Statements of Use or Notices of Allowance.
Use in commerce has specific legal requirements under 15 U.S.C. § 1127. For goods, the mark must be placed on goods, their containers, or associated tags or labels, and the goods must be sold or transported in commerce—typically meaning interstate or international commerce. For services, the mark must be used or displayed in rendering services, and the services must be provided in commerce.
Use in Commerce Standard
One of the most significant differences between U.S. and foreign trademark systems is the use requirement. While many countries allow registration based on applications alone, U.S. law requires actual use in commerce for most registrations (Section 44(e) provides a limited exception).
"Use in commerce" under 15 U.S.C. § 1127 means bona fide use of marks in the ordinary course of trade, not merely to reserve rights. Token use or minimal activity insufficient to establish bona fide commercial activity doesn't satisfy this requirement.
For goods, acceptable use requires:
Placing marks on goods, their packaging, labels, or tags affixed to goods
Selling or transporting goods in commerce (typically interstate or international)
Providing specimens showing these uses to the USPTO
For services, acceptable use requires:
Using or displaying marks in selling or advertising services
Actually rendering services in commerce
Providing specimens showing these uses
Foreign applicants planning U.S. market entry should understand these requirements and ensure their activities constitute bona fide use in commerce before filing use-based applications or Statements of Use.
Specimen Requirements
The USPTO requires specimens demonstrating actual use in commerce. Foreign applicants often submit specimens that don't meet U.S. requirements, resulting in office actions and delayed registration.
For Goods: Acceptable specimens include:
Photographs showing marks on actual goods
Product packaging with marks visible
Labels or tags attached to goods showing marks
Point-of-sale displays showing marks in connection with goods
Unacceptable specimens include:
Mock-ups or digitally created images not showing actual goods
Webpage screenshots showing only product descriptions without purchasing capability
Advertising materials not showing marks on goods themselves
For Services: Acceptable specimens include:
Website screenshots showing marks used in connection with service descriptions and ordering
Advertisements promoting services under the marks
Business signage or materials used in rendering services
Brochures or promotional materials advertising services
Unacceptable specimens include:
Business cards showing only contact information
Invoice templates or forms not showing actual services rendered
Letterhead or stationery without service information
Foreign applicants should work with U.S. counsel to ensure specimens meet USPTO requirements before filing applications.
Identification of Goods and Services
U.S. applications require specific, definite identification of goods and services covered by registrations. The USPTO maintains the Trademark ID Manual containing pre-approved identifications that meet specificity requirements.
Foreign applicants often use identification language acceptable in their home countries but insufficient under U.S. standards. Common issues include:
Overly Broad Terms: Descriptions like "computer software" without specifying function are too indefinite. Better: "Computer software for financial management."
Indefinite Language: Phrases like "and related goods" or "including but not limited to" are unacceptable.
Incorrect Classifications: The Nice Classification system organizes goods and services into 45 international classes. Foreign applicants sometimes misclassify items, requiring amendments and potential additional fees.
Working with U.S. counsel familiar with USPTO identification requirements ensures proper descriptions from initial filing, avoiding office actions and delays.
The Registration Process for Foreign Applicants
Step 1: Engaging U.S. Counsel
Foreign applicants should engage U.S.-licensed trademark attorneys before filing applications. At Yomtobian Law, I regularly represent foreign companies and individuals seeking U.S. trademark protection, providing comprehensive services including:
Trademark clearance searching to identify conflicts
Filing strategy consultation assessing appropriate bases
Application preparation ensuring USPTO compliance
Office action responses addressing examiner objections
Maintenance filing coordination for registered marks
I actively file trademarks for foreign associates and their clients, serving as U.S. counsel while respecting existing attorney-client relationships in home countries. This collaborative approach ensures clients receive coordinated international trademark strategies while meeting U.S. requirements.
Step 2: Comprehensive Clearance Searching
Before filing U.S. applications, conduct thorough searches of U.S. federal registrations, pending applications, state registrations, and common law uses. The USPTO will reject applications conflicting with prior registered or applied-for marks, and comprehensive searching identifies these conflicts before investing in applications.
At Yomtobian Law, trademark clearance searches cost $2,000 and include detailed analysis of federal registrations, pending applications, state registrations, common law commercial uses, and domain names. These searches assess likelihood of confusion and provide strategic guidance on filing prospects.
Step 3: Application Preparation and Filing
U.S. counsel prepares applications ensuring compliance with USPTO requirements. This includes:
Selecting appropriate filing bases (Section 1(a), 1(b), 44(d), or 44(e))
Drafting precise identifications using USPTO-approved language
Providing accurate applicant information including foreign addresses
Selecting appropriate international classes
Submitting acceptable specimens (for use-based filings)
Declaring bona fide intent to use (for ITU filings)
Applications are filed electronically through the USPTO's TEAS system. Upon filing, the USPTO issues serial numbers and filing dates establishing priority.
Step 4: Examination and Office Actions
After filing, applications are assigned to USPTO examining attorneys who review for compliance and search for conflicting marks. Current processing times show initial examination occurring approximately 8-10 months after filing.
Foreign applications commonly receive office actions on grounds including:
Likelihood of Confusion: Citations to prior registered or pending marks deemed confusingly similar
Specimen Issues: Questions about whether specimens demonstrate proper use in U.S. commerce
Identification Problems: Requests to clarify, limit, or amend goods/services descriptions
Descriptiveness: Refusals for marks deemed merely descriptive without secondary meaning
Responding to office actions requires legal analysis and argument, evidence submission, and strategic amendments. The six-month response deadline is firm—failure to respond results in abandonment. U.S. counsel experienced in office action practice is essential for overcoming refusals and securing registration.
Step 5: Publication and Registration
Once examining attorneys approve applications, they're published in the Trademark Official Gazette for 30 days, during which third parties can oppose registration. Most applications proceed through publication without opposition.
After publication (or opposition resolution if oppositions are filed), registration issues for use-based applications. For intent-to-use applications, Notices of Allowance issue, providing time to commence use and file Statements of Use before registration.
Maintenance Requirements for Foreign Registrants
Federal registrations require periodic maintenance filings to remain active:
Section 8 Declaration: Between the 5th and 6th year after registration, registrants must file declarations proving continued use in U.S. commerce. This filing includes current specimens and declarations that use has continued. Filing fee: $225 per class.
Combined Section 8 and 9: Between the 9th and 10th year, and every 10 years thereafter, registrants file combined declarations of continued use and renewal applications. Filing fee: $425 per class.
Section 15 Declaration: After five consecutive years of continuous use, registrants can file declarations achieving incontestability status, providing conclusive evidence of validity. Filing fee: $100 when combined with Section 8.
Foreign registrants must maintain U.S. counsel for filing these documents, as the attorney requirement applies to all filings, not just initial applications.
Special Considerations for Foreign Applicants
Addressing Requirements
Foreign applicants must provide their actual foreign domicile addresses, not P.O. boxes or "care of" addresses. This address determines whether U.S. counsel is required—providing false addresses to circumvent the attorney requirement violates USPTO regulations and can result in registration cancellation.
U.S. counsel's address is used for official USPTO correspondence, but applicants must provide their true foreign addresses in applications.
Signing Authority
Corporate applicants must ensure appropriate officers sign declarations. The USPTO scrutinizes signing authority for foreign entities, requiring verification that signatories have authority to bind companies. This often requires corporate documentation showing title and authority.
Exchange Rate and Fee Considerations
USPTO fees are assessed in U.S. dollars. Foreign applicants paying from foreign accounts should consider exchange rates and international transaction fees when budgeting for applications.
Time Zone Coordination
Deadlines are based on U.S. Eastern Time. Foreign applicants in different time zones should work with U.S. counsel to ensure timely filing, particularly for deadline-sensitive documents like office action responses.
Language Requirements
All USPTO filings must be in English. Foreign applicants with marks in non-Latin characters must provide transliterations. Marks containing foreign language terms require translations and statements concerning meaning.
Madrid Protocol: Streamlined International Filing
The Madrid Protocol provides an alternative to direct U.S. filing for applicants from member countries. This system allows filing one international application through home trademark offices that can designate the United States and up to 130 other countries.
Madrid Protocol Advantages
Centralized Filing: One application, one language, one set of fees for protection in multiple countries
Cost Efficiency: Lower overall costs than filing separately in each country
Simplified Management: Centralized renewals and changes through WIPO
U.S. Registration Benefits: Successful Madrid applications designating the U.S. result in U.S. registrations with full protection
Madrid Protocol Limitations for U.S. Designation
U.S. Examination: The USPTO examines Madrid applications under U.S. law, applying the same standards as direct applications
Office Actions Require U.S. Counsel: Once the USPTO issues provisional refusals or office actions, applicants must appoint U.S. counsel to respond
Transformation Rights: If international registrations are cancelled within five years, applicants can transform into direct national applications, preserving priority dates
Foreign applicants considering Madrid Protocol should understand that U.S. designation often requires U.S. counsel despite the centralized filing system, as most applications receive some form of office action requiring legal response.
Cost Considerations
USPTO Government Fees: $350 per class for direct U.S. applications ($250 for TEAS Plus applications meeting specific requirements)
Attorney Fees: Professional trademark services at Yomtobian Law cost $2,000 for comprehensive clearance searching and $2,000 for application preparation, filing, and prosecution through registration including office action responses.
Total Investment: Budget $2,350-$2,700 per class for complete professional representation from searching through registration
Maintenance Costs: Plan for $225-$525 per class at years 5, 9, and each subsequent 10-year interval
Madrid Protocol Fees: WIPO filing fees plus individual designation fees calculated in Swiss Francs, varying by country
While professional representation adds costs beyond self-filing, it's legally required for foreign applicants and dramatically improves success rates by ensuring compliance with complex U.S. requirements.
Why Foreign Companies Need U.S. Protection
The United States offers foreign companies critical benefits justifying trademark registration investment:
Market Size: Access to 330 million consumers with high purchasing power
E-Commerce Reach: Online sales connect foreign companies directly with U.S. customers
Counterfeit Prevention: U.S. Customs recordation stops counterfeit goods at borders
Brand Value: U.S. trademark registrations enhance global brand portfolios and business valuation
Licensing Opportunities: U.S. registrations enable licensing to U.S. companies
Investment Requirements: U.S. venture capital and acquisition due diligence expects U.S. trademark protection
Working with Yomtobian Law
As your U.S. trademark counsel, I provide comprehensive services specifically designed for foreign applicants and their existing counsel:
Trademark Clearance Searching: $2,000 for thorough U.S. searching and likelihood of confusion analysis
Application Filing and Prosecution: $2,000 for complete application preparation, filing, and prosecution through registration including office action responses
Collaborative Approach: I work directly with your foreign counsel to coordinate international strategies while handling all U.S. requirements
Transparent Communication: Regular updates, English-language correspondence, and accommodation of time zone differences
Referral Partnership: I actively file trademarks for foreign associates, recognizing your existing client relationships while providing required U.S. legal representation
Cultural Competency: Experience with foreign applicants from over 50 countries, understanding international business practices and communication preferences
Ready to secure U.S. trademark protection? Contact Yomtobian Law today to discuss your U.S. trademark needs. Let's navigate U.S. requirements together and secure the protection your brand deserves in the world's largest consumer market.
Frequently Asked Questions
Q: Can I file a U.S. trademark application myself if I'm based outside the United States?
No. Since August 3, 2019, all foreign-domiciled applicants must be represented by U.S.-licensed attorneys. The USPTO will suspend applications filed by foreign applicants without U.S. counsel and require appointment of qualified attorneys before proceeding.
Q: Does the attorney requirement apply to Canadian applicants?
Yes. The initial exemption for Canadian applicants no longer applies. All Canadian individuals and businesses must have U.S. counsel for trademark filings, just like applicants from other countries.
Q: Can I register a trademark in the U.S. if I'm not yet selling in the United States?
Yes. You can file intent-to-use applications if you have bona fide intent to enter the U.S. market. Alternatively, if you have trademark registrations in your home country, you can file Section 44(e) applications that don't require U.S. use for registration, though use must eventually commence.
Q: How long does U.S. trademark registration take for foreign applicants?
The timeline is the same as for U.S. applicants: 12-18 months for straightforward applications, potentially longer if office actions or oppositions occur. Madrid Protocol applications may take longer due to additional WIPO processing time.
Q: What happens if my home country trademark registration expires during the dependency period?
If a Section 44(e) registration serving as the basis for your U.S. registration is cancelled within five years of the U.S. registration date, the U.S. registration is also subject to cancellation. After five years, U.S. registrations become independent and home country cancellation doesn't affect U.S. rights.
Q: Can I use the ® symbol with my U.S. trademark registration?
Yes, but only in the United States. The ® symbol specifically indicates U.S. federal registration. In other countries, you should use TM or comply with local requirements regarding registration symbols. Using ® in countries where you're not registered may violate local laws.
Q: Do I need separate registrations for each country where I do business?
Yes. Trademark rights are territorial. Each country maintains its own registration system. The Madrid Protocol streamlines filing in multiple countries through one application, but each designated country examines applications under its national laws and issues separate national registrations or refusals.
Q: How much does U.S. trademark registration cost for foreign applicants?
USPTO government fees are $350 per class. Professional attorney fees typically range $2,000-$3,000 for comprehensive services. At Yomtobian Law, complete services including clearance searching and application prosecution cost $2,000 plus government fees, totaling approximately $2,350 per class.
Q: What if I already filed a trademark application without knowing about the attorney requirement?
The USPTO will suspend your application and require appointment of U.S. counsel. You must appoint qualified counsel within the deadline specified in the suspension notice, or the application will be abandoned. Your filing date can be preserved if you timely appoint counsel.
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