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If you want to file a trademark in the U.S. from another country, you have two main options: file directly with the USPTO or file through the Madrid Protocol. Either way, you are required by law to use a U.S.-licensed attorney.
Knowing how to file a trademark in the U.S. from another country is not always straightforward. The U.S. trademark system has its own rules, its own filing bases, and its own attorney requirement that apply specifically to applicants based outside the United States. What works in your home country may not work here.
Richard Gearhart, founding partner of Gearhart Law, works with international businesses and foreign companies to navigate the U.S. trademark process from start to finish. The rules are specific, and the consequences of getting them wrong are serious. This post covers your filing options, what each one requires, and what to watch out for at every stage of the process.
How to File a Trademark in the U.S. from Another Country: Your Two Options
Foreign applicants have two routes to U.S. trademark protection. Which one is right for you depends on where you are in your international trademark strategy and whether you already hold a trademark registration in your home country.
Option 1: File Directly With the USPTO
You can file a trademark application directly with the United States Patent and Trademark Office (USPTO) using one of two filing bases available to foreign applicants.
- Section 1(b) — intent to use: If you intend to use the mark in U.S. commerce but have not yet done so, you can file an intent-to-use application. This locks in your priority date while you prepare to launch in the U.S. market. You will need to file a Statement of Use before the registration is granted, showing that you are actually using the mark in commerce.
- Section 44(e) — foreign registrations: If you already hold a valid trademark registration in your home country, and that country has a treaty or agreement with the United States, you can use that registration as the basis for a U.S. application. You do not need to show use in U.S. commerce at the time of filing. This is the most practical option for foreign companies that have already secured their brand in their home market.
Option 2: File Through the Madrid Protocol
The Madrid Protocol is an international treaty that allows you to file for trademark protection in multiple countries through a single application filed with your home country’s trademark office. The application is then forwarded to the World Intellectual Property Organization (WIPO), which transmits it to each country you have designated, including the United States.
For a U.S. designation through Madrid, the USPTO examines the application under U.S. law. This means the same standards apply as for a direct filing: the mark must be distinctive, must not conflict with existing marks, and must meet U.S. use requirements. If the USPTO has any issues with your application, it will issue an Office Action that must be responded to by a U.S.-licensed attorney.
Filing through Madrid is efficient when you are seeking protection in multiple countries at once. But it is not a shortcut for the U.S. specifically. The examination process is the same, and the attorney requirement applies equally.
The U.S. Attorney Requirement: What Foreign Applicants Must Know
Since August 3, 2019, every trademark applicant based outside the United States is required to appoint a U.S.-licensed attorney for all trademark matters before the USPTO. This applies whether you file directly or through the Madrid Protocol.
Your U.S. attorney must prepare, sign, and submit every communication with the USPTO on your behalf. This includes the initial application, responses to Office Actions, maintenance filings, and any proceedings before the Trademark Trial and Appeal Board (TTAB).
If you file without appointing a U.S. attorney, the USPTO will issue an Office Action requiring you to do so. If you do not comply within the response period, your application will be abandoned and you will lose your filing date.
What “Use in Commerce” Means for Foreign Applicants
The United States ties trademark rights to actual use of the mark in commerce, meaning the mark must be used in connection with real goods or services sold or transported in U.S. trade. This is different from many other countries, where registration alone is enough to establish rights. As a foreign applicant, how and when you need to demonstrate that use depends entirely on which filing basis you choose.
- Section 1(b): You do not need to show U.S. use at filing but must file a Statement of Use before registration is granted. If you miss the deadline or fail to file an extension in time, your application will be abandoned and you will lose your filing date.
- Section 44(e): You do not need to prove U.S. use at filing or to obtain registration. However, if you cannot show continued use of the mark during post-registration maintenance filings, your registration may be cancelled, even if the underlying foreign registration is still valid.
- Section 66(a) through Madrid: Use is also not required at filing, but you cannot later change your filing basis. If your home country registration is ever cancelled or lapses, a Section 44(e) applicant can switch to a use-based filing to protect their U.S. rights. A Section 66(a) applicant cannot, leaving their U.S. registration exposed with no easy fix.
Common Mistakes Foreign Companies Make When Filing a U.S. Trademark
These are the errors that most often delay, weaken, or destroy a foreign applicant’s U.S. trademark application:
- Filing without a U.S. attorney, which triggers an Office Action and risks abandonment if not corrected in time
- Choosing the wrong filing basis for their situation, which can limit options later in the process
- Failing to conduct a proper clearance search, leading to conflicts with existing marks that could have been anticipated
- Misidentifying goods and services in the application, which can result in a narrower registration than intended or an Office Action requiring amendment
- Missing deadlines for responding to Office Actions or filing Statements of Use, which can result in abandonment
- Assuming that a Madrid Protocol filing automatically results in a U.S. registration without further examination
- Neglecting post-registration maintenance requirements, which can result in cancellation of a valid registration
Get Your U.S. Trademark Filing Right From the Start
Filing a trademark in the U.S. from another country is a process with specific rules, multiple filing options, and real consequences for getting it wrong. Gearhart Law works with international businesses and foreign companies to handle the complete U.S. trademark registration process, from initial clearance search to granted registration and beyond.
We have helped clients from around the world protect their brands in the U.S. market. Call 908.273.0700 or send us a message to schedule your free half-hour consultation.
Frequently Asked Questions: How to File a Trademark in the U.S. from Another Country
1. Can I file a trademark in the U.S. if my business is based in another country?
Yes. Foreign businesses and individuals can file for U.S. trademark protection either directly with the USPTO or through the Madrid Protocol. Either way, you are required to appoint a U.S.-licensed attorney to handle all communications with the USPTO. Gearhart Law’s international trademark team works with foreign applicants throughout the process.
2. What is the difference between filing directly with the USPTO and filing through the Madrid Protocol?
Filing directly with the USPTO gives you more flexibility in choosing your filing basis and managing your application. Filing through the Madrid Protocol is more efficient if you are seeking protection in multiple countries at once, as it consolidates the process through a single application. Both routes are subject to the same U.S. examination standards and the same attorney requirement. The right choice depends on your overall trademark strategy and which markets you are targeting.
3. Do I need to be using my trademark in the U.S. to file an application?
Not necessarily. If you file under Section 1(b), you can file based on an intent to use the mark in U.S. commerce, without having used it yet. If you file under Section 44(e) based on a home country registration, or through the Madrid Protocol under Section 66(a), you also do not need to show U.S. use at the time of filing. However, use requirements apply at different stages depending on your filing basis, and your U.S. trademark attorney can advise on what will be required and when.
4. How long does it take to get a U.S. trademark registered from abroad?
The process typically takes between eight and fourteen months from filing to registration, assuming no major objections. If the USPTO issues an Office Action, the process will take longer depending on how quickly it is resolved. You can check current USPTO processing times on the USPTO trademark application timeline page.
5. What is Section 44(e) and how does it help foreign applicants?
Section 44(e) lets you use an existing trademark registration from your home country as the basis for a U.S. application, as long as your country has a treaty with the United States. You do not need to prove you are using the mark in the U.S. at the time of filing, which makes it one of the fastest routes to U.S. trademark protection for foreign businesses.
6. What happens if my Madrid Protocol application receives a U.S. Office Action?
If the USPTO issues an Office Action in response to your Madrid Protocol application, you must have a U.S.-licensed attorney respond on your behalf within the required timeframe. Failure to respond correctly and on time will result in the U.S. designation being abandoned. This is one of the most common and most avoidable mistakes foreign applicants make. Contact a U.S. trademark attorney as soon as you receive an Office Action.
7. Can I do a trademark search before I file in the U.S.?
Yes, and you should. A trademark clearance search conducted before filing tells you whether your mark is already in use or registered in the U.S., whether there are conflicts that could block your application, and whether your mark is distinctive enough to be registered. Skipping the search is one of the most common mistakes foreign applicants make and one of the most expensive.
8. What do I need to maintain my U.S. trademark registration after it is granted?
U.S. trademark registrations require maintenance filings to stay alive. Between the fifth and sixth years after registration, you must file a Declaration of Use confirming the mark is still in use in commerce. Renewals are then required every ten years. Missing these deadlines can result in cancellation of your registration. Your U.S. attorney should track these deadlines on your behalf.