U.S. trademark counsel for foreign applicants and international law firms.
Filing or maintaining a U.S. trademark from outside the United States requires a licensed U.S. attorney. John works directly with foreign brand owners and serves as U.S. counsel for international law firms who need a reliable point of contact before the USPTO.
Who must retain U.S. counsel
The USPTO requires that any trademark applicant, registrant, or party to a proceeding whose domicile is outside the United States be represented by an attorney who is licensed to practice law in the United States. This is generally referred to as the U.S.-counsel rule. It applies to a direct U.S. application filed from abroad, to a request for extension of protection into the United States under the Madrid Protocol, and to most post-registration filings for a foreign-domiciled owner. Foreign associates and in-house counsel often have deep trademark experience in their own jurisdictions but are not authorized to represent a client directly before the USPTO, that is where U.S. counsel comes in.
How a foreign brand owner reaches U.S. registration.
Direct U.S. applications
A new application filed directly with the USPTO on behalf of a foreign-domiciled owner, prepared and filed under the owner’s U.S. counsel.
See how registration worksMadrid Protocol provisional refusals
When a Madrid Protocol extension of protection into the United States receives a provisional refusal, U.S. counsel is required to respond.
Read more belowSection 44 applications
Applications based on an owner’s existing foreign registration or a pending foreign application, filed under Section 44 of the Trademark Act.
Read more belowMadrid Protocol provisional refusals
A request for extension of protection into the United States under the Madrid Protocol is examined by the USPTO much like a direct application. If the examining attorney identifies an issue, a likelihood-of-confusion concern, a description problem, a missing declaration, the USPTO issues a provisional refusal. Responding requires U.S. counsel; the international registration and the WIPO filing alone do not authorize a response to USPTO examination.
Section 44 applications
A foreign applicant may also file a direct U.S. application relying on Section 44 of the Trademark Act, using an existing home-country registration or a pending home-country application as the basis for the U.S. filing, sometimes combined with an actual-use basis. Section 44 filings still go through USPTO examination and still require a U.S.-licensed attorney of record.
Office Actions
Whether the underlying filing is a direct U.S. application, a Madrid Protocol extension, or a Section 44 application, an Office Action from the USPTO requires a timely, substantive response from U.S. counsel. John reviews the refusal, explains the issue in plain language for the foreign associate or client, and prepares and files the response.
Statements of Use
When a U.S. application proceeds on an intent-to-use basis, a Statement of Use (or a request to extend the deadline) must eventually be filed to show the mark is actually being used in U.S. commerce. This step often requires close coordination with the foreign client to confirm U.S. use has begun and to gather an acceptable specimen.
Maintenance filings
Once registered, a U.S. registration owned by a foreign-domiciled party is subject to the same Section 8 and Section 9 maintenance and renewal requirements as a domestically owned registration, and still requires a U.S.-licensed attorney to sign and file those declarations.
Assignment and ownership updates
Corporate reorganizations, mergers, and assignments involving a foreign-owned U.S. registration need to be reflected in the USPTO record. John coordinates recordation of the assignment and confirms the registration reflects the correct current owner.
Built to work the way international referrals work.
Flat fees & response times
Each U.S. filing, Office Action response, or maintenance filing is quoted as a flat fee in writing before work begins, with an estimated response time appropriate to the applicable deadline.
See flat-fee pricingEnglish-language communication
All USPTO filings and correspondence with the foreign associate or client are handled in English, matching USPTO procedure and making it straightforward to keep an overseas team informed.
Book a free 15-minute fit callTime-zone & document workflow
Deadlines and drafts are shared electronically and scheduled with the foreign associate’s time zone in mind, so review and signature can happen without unnecessary delay.
Send an inquirySend the basics and John will follow up.
For law firms, in-house counsel, and foreign associates who need U.S. trademark counsel for a client matter.
A reliable point of contact before the USPTO.
Whether you represent the applicant directly or are a foreign associate seeking U.S. counsel, John will explain the next step and provide a written flat-fee quote before work begins.