What Foreign Applicants Should Expect From U.S. Trademark Counsel
A foreign-domiciled applicant must use a qualified U.S.-licensed attorney before the USPTO. The useful role of U.S. counsel is broader than forwarding correspondence, counsel has to adapt the filing or response to U.S. identification, examination, signature, and procedural requirements that may not match what the applicant is used to at home.
The U.S.-counsel requirement
Since August 2019, the USPTO has required that any applicant, registrant, or party to a proceeding whose domicile or principal place of business is outside the United States be represented by an attorney licensed to practice law in the United States. This applies to applicants, registrants, and parties in TTAB proceedings alike, not just to the initial filing. The rule is confirmed on the USPTO's own page describing the trademark rule requiring foreign applicants to have U.S. counsel, and the underlying question of who needs an attorney at all is addressed on the USPTO's Do I need an attorney? page. Foreign attorneys who aren't licensed in the U.S. generally can't represent applicants before the USPTO, no matter how qualified they are in their own jurisdiction.
A foreign business that wants U.S. brand protection needs to identify counsel early, not after running into a filing problem. The attorney of record becomes the point of contact with the USPTO and is responsible for what gets filed in the applicant's name.
| Route | Typical foundation | Important U.S. issue |
|---|---|---|
| Madrid Section 66(a) | International registration designating the U.S. | U.S. identification and examination rules still apply; scope is constrained by the international registration |
| Section 44(d) | Qualifying foreign application and timely U.S. filing | Priority claim and later foreign-registration documentation |
| Section 44(e) | Qualifying foreign registration | U.S. registration may proceed without initial U.S. use, but later maintenance requires U.S. use |
| Section 1(b) | Bona fide intent to use in U.S. commerce | U.S. use filing required before registration |
Filing through the Madrid Protocol
The Madrid System, administered by the World Intellectual Property Organization, lets a trademark owner file one international application and request protection in multiple member countries, including the U.S., through an extension of protection. See WIPO's Madrid System overview for how the international mechanics work. If your home country is a Madrid member and you already hold or are filing a home-country application, extending it to the U.S. is often familiar and efficient.
Even when the U.S. portion arrives through Madrid, full USPTO examination still applies once it reaches the agency: likelihood-of-confusion review, descriptiveness review, and eventual specimen/use requirements for maintenance. Madrid simplifies the international filing mechanics. It doesn't change what the USPTO requires for U.S. registration, and the U.S.-counsel requirement for foreign-domiciled applicants still applies once the U.S. examination phase begins.
Filing directly under Section 44
Section 44 offers a different path. A foreign applicant who owns a trademark application or registration in a qualifying country can file directly with the USPTO based on that foreign filing, generally without first establishing actual use in the United States. This is usually described as Section 44(d), based on a foreign application, generally requiring the U.S. filing within six months of the foreign filing date to claim priority, or Section 44(e), based on an existing foreign registration.
Section 44 filings can work well when Madrid doesn't fit the applicant's situation, but they carry their own documentary requirements: typically a certified copy or equivalent proof of the foreign registration or application, sometimes with translation, plus the standard USPTO examination process once filed.
How the work actually divides up
A remote engagement runs more smoothly when everyone understands their part from the start. In practice, a foreign associate or the applicant's home-country counsel typically supplies client instructions and home-country documents, translations, certified copies, and the underlying registration or application record. U.S. counsel advises on USPTO requirements and signs or files as permitted under the applicable rules. The applicant, wherever based, still has to review and verify the factual statements going into the application or response, since counsel is relying on the client for facts about actual use, dates, and the goods or services offered.
Where the friction actually shows up
The most common friction I see isn't the time-zone difference. It's an identification of goods or services that was perfectly acceptable at a foreign trademark office but is too broad or indefinite for USPTO standards, which tend to be stricter and more specific than many other countries' systems. The second most common issue is a deadline that reaches U.S. counsel after too much of the response period has already passed, because the handoff between the applicant, home-country counsel, and U.S. counsel wasn't set up early enough.
A well-run remote engagement generally has a few things in common. Deadlines run on U.S. time regardless of where the applicant sits, so building in a buffer for handoffs matters more than it does for a domestic client. Most communication happens asynchronously, email and written status updates, with live calls booked in advance for windows that work for both sides, rather than expecting instant back-and-forth. And everything, including the fee, is quoted in writing before work starts.
What to send U.S. counsel, ideally on the first contact rather than after a deadline is already close:
- Applicant's full legal name and domicile.
- Foreign application or registration details.
- WIPO or USPTO serial number, if one already exists.
- Goods and services description, with an English translation if needed.
- The current deadline, if one is running.
- Any existing Office Action.
- A preferred communication contact and time-zone window.
Based outside the U.S. and need U.S. counsel?
Submit your U.S. serial number, home-country filing details, and deadline through the dedicated foreign-applicant intake. John will confirm the U.S. scope and flat fee in writing.