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The United States Patent and Trademark Office (USPTO) has specific rules that apply only to foreign applicants, from mandatory U.S. attorney representation to how your domicile is determined, how your goods and services must be described, and what you need to do to keep your registration alive after it is granted.
The USPTO trademark rules for foreign applicants are not the same as the rules for U.S.-based filers. Some requirements apply only to businesses based outside the United States. Others apply to everyone but create specific problems for foreign applicants who are unfamiliar with how the U.S. system works.
Gearhart Law works with non-U.S. businesses entering the American market. We see the same mistakes come up repeatedly, and almost all of them are avoidable with the right preparation. Here is what you need to know before you file.
The USPTO Rules That Apply Specifically to Foreign Applicants
Rule 1: You Must Have a U.S.-Licensed Attorney
Since August 3, 2019, every trademark applicant based outside the United States is required to appoint a U.S.-licensed attorney for all USPTO trademark matters. This covers the initial application, Office Action responses, maintenance filings, and TTAB proceedings.
Filing without one will result in an Office Action requiring you to appoint U.S. counsel. If you do not comply in time, your application will be abandoned.
Rule 2: Your Domicile Determines Whether the Rule Applies to You
The USPTO determines whether you are a foreign applicant based on domicile, not citizenship or nationality. Your domicile is your permanent legal address if you are an individual, or your principal place of business if you are a company.
If that address is outside the United States or its territories, you are a foreign-domiciled applicant, and the attorney requirement applies. This includes businesses incorporated in the U.S. but managed and operated from outside the country.
Rule 3: Your Filing Basis Must Match Your Situation
Foreign applicants have three possible filing bases. Section 1(b) is for applicants who intend to use the mark in U.S. commerce. Section 44(e) is for applicants who already hold a valid trademark registration in a country with a U.S. treaty.
Section 66(a) is for applicants filing through the Madrid Protocol. Choosing the wrong basis or misrepresenting your situation can result in rejection or cancellation of your registration.
General Rules That Commonly Trip Up Foreign Applicants
Identification of Goods and Services
Every U.S. trademark application must include an accurate and specific identification of the goods or services the mark will be used with. The USPTO does not accept vague or overly broad descriptions.
Many foreign applicants copy language from their home country applications, which often use different classification systems and broader descriptions than the USPTO allows. An identification that does not meet USPTO standards will trigger an Office Action requiring amendment, which delays your application and may narrow your protection.
Your U.S. attorney should draft the identification from scratch based on how your goods or services will actually be sold in the U.S. market.
Specimen Requirements
A specimen is evidence that your trademark is actually being used in commerce in connection with the goods or services in your application. For most goods, this means a photo of the mark on the product, the packaging, or a label at the point of sale. For services, it is typically a screenshot of a website, a brochure, or advertising material showing the mark in use.
Don’t make the mistake of submitting images that are too small, labels in a foreign language without a translation, or website screenshots that do not clearly show the mark being used in U.S. commerce. A rejected specimen triggers an Office Action and can delay or jeopardize your application.
The Declaration of Use
After your trademark is registered, it does not stay registered automatically. Between the fifth and sixth year after registration, you must file a Declaration of Use confirming the mark is still in use in U.S. commerce.
If you miss this filing, your registration will be cancelled. Renewals are then required every ten years. Many international companies lose their U.S. registrations not because they did anything wrong during the application process, but because they were not tracking these post-registration deadlines.
Get the USPTO Trademark Rules Right Before You File
The USPTO trademark process has more moving parts for foreign applicants than most people realize going in. Getting any one of these rules wrong can cost you your filing date, narrow your protection, or result in a registration that cannot be enforced.
Gearhart Law works with non-U.S. businesses entering the American market to navigate every step of the USPTO process correctly. Leave your details or call 908.273.0700 for a free half-hour consultation.
Frequently Asked Questions About USPTO Trademark Rules for Foreign Applicants
1. How does the USPTO determine if I am a foreign applicant?
The USPTO uses domicile to determine whether you are a foreign applicant. Your domicile is your permanent legal address if you are an individual, or your principal place of business if you are a company. If that address is outside the United States or its territories, the foreign applicant rules apply to you, regardless of your citizenship or where your company is incorporated.
What happens if I describe my goods and services incorrectly?
If your identification of goods and services does not meet USPTO standards, the examining attorney will issue an Office Action requiring you to amend the description. Depending on how the amendment is made, this can narrow the scope of your protection. It can also delay your application by several months. Your U.S. attorney should draft the identification specifically for the USPTO rather than using language from a foreign application.
2. What is the Declaration of Use and when do I need to file it?
The Declaration of Use is a post-registration filing that confirms your trademark is still in active use in U.S. commerce. You must file it between the fifth and sixth year after your registration date. If you miss the deadline, your registration will be cancelled. After that initial filing, renewals are required every ten years.
3. Can I copy my home country trademark application when filing in the U.S.?
No. The USPTO uses its own classification system and requires specific, accurate descriptions of goods and services that often differ significantly from what other countries accept. Using language from a foreign application frequently results in an Office Action.
4. What is the difference between Section 44(e) and Section 66(a)?
Section 44(e) allows you to base a U.S. application on an existing home country registration, provided your country has a treaty with the United States. Section 66(a) is the filing basis for applications made through the Madrid Protocol. Both allow registration without proving U.S. use at filing, but Section 66(a) applications cannot later change their filing basis, which creates specific risks if their home country registration is ever cancelled or lapses.
5. Do the USPTO foreign applicant rules apply if I file through the Madrid Protocol?
Yes. Filing through the Madrid Protocol does not exempt you from the U.S. attorney requirement or any other USPTO rule. If the USPTO issues an Office Action on your Madrid Protocol application, a U.S.-licensed attorney must respond on your behalf within the required timeframe. The foreign applicant rules apply to all non-U.S. domiciled applicants regardless of how the application is filed.