Who this guide is for
Companies, founders, and online sellers based outside the United States who want to register or protect a trademark in the U.S. market. This includes brands expanding into the U.S. through e-commerce, marketplace sellers who need a U.S. registration for brand protection programs, and businesses that already own a trademark at home and want the same protection in the United States.
The short version
- If your domicile is outside the U.S., you need a U.S.-licensed attorney to file with the USPTO and to respond to it.
- You can reach the U.S. directly with the USPTO, through the Madrid Protocol, or by relying on your home-country filing under Section 44.
- Each route has trade-offs in flexibility, cost, and risk. The right one depends on your brand, your goods or services, and your plans for other countries.
1. The rule: you need a U.S.-licensed attorney
Since August 3, 2019, trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings whose domicile is outside the United States must be represented before the USPTO by an attorney licensed in the United States. The USPTO also requires every applicant to provide a domicile address, which is not the same as a mailing address.
Read the guide: The U.S. Attorney Requirement for Foreign-Domiciled Applicants →
2. The strategy: Madrid Protocol or direct USPTO filing
Many foreign brands extend a home-country trademark to the United States through the Madrid Protocol. Others file a U.S. application directly. Madrid can be efficient across many countries, but U.S. examination is strict, and a U.S. extension can depend on your home filing for five years. A direct filing gives more control over the U.S. application itself.
Read the guide: Madrid Protocol vs. Direct USPTO Filing →
3. The logistics: using your home-country filing
Under Section 44 of the U.S. trademark law, you can claim the priority date of a recent foreign application (Section 44(d)) or base a U.S. application on your home-country registration (Section 44(e)), in some cases registering in the U.S. before you use the mark there.
Read the guide: Section 44(d) and 44(e) Filings →
4. After you file: USPTO Office Actions
An Office Action is a letter from the USPTO examining attorney raising issues that must be resolved before your mark can register. Common issues for foreign filers include identifications of goods and services that are too broad for U.S. standards, likelihood of confusion with existing U.S. marks, and missing domicile or attorney information. A foreign-domiciled applicant must respond through a U.S.-licensed attorney, and responses must be filed before the deadline in the action.
Working with us from outside the United States
You don't need to travel to the United States or keep U.S. business hours. We work with clients remotely, with regional divisions in Washington, D.C. and London.
- By email, on your schedule. We work with international clients primarily by email, so time zones don't slow your matter down.
- Electronic signatures. USPTO declarations are signed electronically. We send you the document to review and sign online, with no printing, scanning, or notarization.
- One point of contact. Kyle Scudiere, Esq. personally handles or oversees every Solace Law matter, from filing through registration.