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If your business is based outside the United States, U.S. trademark filing requirements include working with a U.S.-licensed attorney at every stage. Filing without one risks abandonment of your application and cancellation of your registration.
The United States Patent and Trademark Office (USPTO) requires all foreign-domiciled applicants to be represented by a U.S.-licensed attorney throughout every stage of the trademark process. This rule catches many foreign business owners off guard, especially those who have successfully filed trademarks in their home countries without legal representation.
The U.S. process is different, the requirements are strict, and the consequences of getting it wrong are serious. The international trademark attorneys at Gearhart Law work with international businesses and foreign companies to protect their brands in the U.S. market.
The USPTO’s Foreign Attorney Rule and What It Requires
Since August 3, 2019, every trademark applicant based outside the United States must be represented by a U.S.-licensed attorney in all USPTO trademark matters.
Your U.S.-licensed attorney must prepare, sign, and submit every official communication with the USPTO on your behalf. This is not limited to the initial application. It covers:
- Filing a new trademark application
- Responding to a USPTO Office Action
- Maintaining or renewing an existing registration
- Filing or responding to proceedings before the Trademark Trial and Appeal Board (TTAB)
- Any other official communication with the USPTO in trademark matters
There is no partial compliance. If you file an application and then try to respond to an Office Action yourself or through a non-U.S. attorney, the USPTO will issue a requirement for U.S. counsel. If you do not comply within the response period, your application will be abandoned.
Who Counts as Foreign-Domiciled?
The USPTO’s foreign attorney rule applies to you if you are an individual whose permanent legal address is outside the United States or its territories, or if you are a company whose principal place of business is outside the United States or its territories.
This includes Canadian companies, UK businesses, European companies, and businesses based anywhere else in the world. There are no exceptions based on where you are from. Even businesses from countries with close trade relationships with the U.S., such as Canada or the United Kingdom, must comply if they want to protect their brand name or logo in the U.S.
Why Trademark Filing Requirements for Foreign Companies Are Stricter
The rule was introduced in response to a sharp rise in inaccurate and fraudulent trademark applications from foreign applicants, particularly from China. Many of these applications were filed without proper U.S. legal representation. They contained false statements, incorrect use claims, and improper signatures that made the resulting registrations invalid.
The USPTO also found that many foreign applicants were getting bad advice from unqualified individuals who were not U.S.-licensed attorneys. Because those individuals were not part of the U.S. legal system, the USPTO had little ability to hold them accountable.
In other words, the rule protects you as much as it regulates you. A properly filed trademark application, prepared by a qualified U.S. attorney, is far less likely to be challenged, invalidated, or abandoned. Your registration is more defensible, and your rights are more secure.
If your business is based outside the United States and you need to file a trademark with the USPTO, Gearhart Law works with international clients to handle the full process from search to registration. Reach out for a free 30-minute consultation.
What Happens If You Try to File Without a U.S. Attorney
If you submit a trademark application as a foreign-domiciled applicant without appointing a U.S.-licensed attorney, the USPTO will not reject it outright. Instead, it will issue an Office Action requiring you to appoint U.S. counsel.
You will have a set period to respond, typically three months with a possible extension to six months. If you do not appoint a qualified U.S. attorney and respond correctly within that window, your application will be abandoned. Once that happens, you lose your filing date. That matters because if someone else files a similar mark while yours is abandoned, they may get there first.
Invalid registrations
There is a more serious risk for companies that somehow get a registration without proper U.S. representation. That registration may be challenged and cancelled because it was not filed correctly. A trademark registration that can be cancelled is not a reliable business asset. You cannot use it with confidence to stop others from copying your brand, support licensing deals, or take action in court.
Filing through the Madrid Protocol is not a loophole
The Madrid Protocol is an international treaty that lets you file for trademark protection in multiple countries through a single application. Many foreign businesses use it as a way to file for U.S. trademark protection alongside other markets. It does not exempt you from the U.S. attorney requirement.
If the USPTO raises any issue with your application, including an Office Action, you must have a U.S.-licensed attorney respond on your behalf.
What to Look for When Choosing a U.S. Trademark Attorney as a Foreign Company
Not all trademark attorneys have experience working with international clients. When you are filing from outside the United States, there are specific things you need from your attorney.
Experience with international clients
Your attorney should understand the practical realities of working across time zones, communicating clearly across language differences, and explaining the U.S. process in a way that keeps you informed without overwhelming you. Gearhart Law has helped protect brands for clients in over 1,000 companies worldwide.
A full-service trademark process
Filing the application is just the beginning. Your U.S. attorney needs to handle the full process:
- Conducting a thorough trademark search before filing
- Drafting an application that accurately describes your goods and services
- Responding to any USPTO Office Actions, monitoring the application through to registration
- Advising you on maintenance and renewal obligations after registration
Clear communication on costs and timeline
The U.S. trademark process typically takes between eight and fourteen months from filing to registration, assuming no major objections. Your attorney should give you a realistic picture of the timeline, the costs involved, and what to expect at each stage.
Protect Your Brand in the U.S. Market Today
Filing a trademark with the USPTO is one of the most important steps you can take to protect your brand in the United States. Getting it right from the start means your registration is solid, your rights are enforceable, and you are not left trying to fix a defective application after the fact.
Gearhart Law works with foreign companies and international businesses to handle the complete U.S. trademark registration process, from initial search to granted registration and beyond. Based in Summit, NJ, we serve clients throughout the United States and internationally. Reach out online or call 908.273.0700 for a free half-hour consultation.
Frequently Asked Questions About Filing a U.S. Trademark as a Foreign Company
1. Can a foreign company file a trademark with the USPTO without a U.S. attorney?
No. Both individuals and companies based outside the United States are required to appoint a U.S.-licensed attorney to file a trademark with the USPTO and handle all related communications. Filing without one will result in a USPTO requirement to appoint U.S. counsel, and failure to comply will lead to your application being abandoned.
2. Does the U.S. attorney requirement still apply if I file through the Madrid Protocol?
Yes. Filing through the Madrid Protocol does not exempt you from the requirement. If the USPTO raises any objection to your international trademark application, including an Office Action, you must have a U.S.-licensed attorney respond. The requirement applies to all foreign-domiciled applicants regardless of how the application is filed.
3. Can my home country attorney handle my U.S. trademark filing?
No, not on their own. A foreign attorney may assist in limited circumstances if their country has a formal arrangement with the USPTO, but a qualified U.S.-licensed attorney must also be appointed and involved. Your home country attorney cannot replace a U.S.-licensed attorney.
4. How long does it take to file a trademark with the USPTO as a foreign company?
The process typically takes between eight and fourteen months from filing to registration, assuming no major objections from the USPTO. A thorough trademark search before filing helps reduce the risk of objections and keeps the process on track. Your U.S. attorney will manage the timeline and keep you informed at each stage.
5. What does a U.S. trademark attorney do for a foreign applicant?
A U.S. trademark attorney handles the complete filing process on your behalf. This includes conducting a clearance search to check for conflicting marks, preparing and filing the application, responding to any USPTO Office Actions, monitoring the application through to registration, and advising you on maintenance and renewal obligations after registration. For foreign clients, a good attorney also explains the U.S. process clearly and keeps communication simple across time zones and language differences.
6. Can Gearhart Law represent foreign companies in U.S. trademark filings?
Yes. Gearhart Law regularly works with international businesses and foreign companies to handle the full U.S. trademark registration process, from initial search to granted registration and beyond. We have helped clients from around the world protect their brands in the U.S. market. Book a free consultation at 908.273.0700.