Registering a U.S. Trademark From Outside the United States

Anyone in the world can own a U.S. trademark. What changes when you're based abroad is who is allowed to file the paperwork. Since 2019 the USPTO hasn't accepted filings directly from most foreign owners. You need a lawyer licensed in the United States, and the USPTO decides whether you need one by looking at your domicile, not your passport or your mailing address.

This guide is for founders and companies outside the U.S.: a brand in Kyiv, Warsaw or São Paulo starting to sell on Amazon.com, a software company with American customers, a manufacturer with a U.S. distributor.

The Rule: Foreign-Domiciled Means a U.S. Attorney

Under 37 C.F.R. § 2.11(a), an applicant, registrant, or party to a proceeding "whose domicile is not located within the United States or its territories must be represented by an attorney" qualified to practise before the USPTO. The rule took effect on August 3, 2019. It also covers Canadian filers. Canadian trademark agents can still be appointed alongside a U.S. attorney, but the USPTO corresponds only with the U.S. attorney.

The attorney has to be an active member in good standing of the bar of the highest court of a U.S. state, commonwealth or territory, and must give the USPTO their bar details: state, bar number and year of admission. A non-lawyer "filing agent" abroad can't sign for you, however official their website looks.

What counts as your domicile

The definitions are in 37 C.F.R. § 2.2. For a person, domicile is the "permanent legal place of residence." For a company, it's the "principal place of business": the headquarters "where the entity's senior executives or officers ordinarily direct and control the entity's activities."

• A Delaware LLC whose only managers run it from Lisbon is, for this purpose, domiciled in Portugal, even though it's a U.S. company on paper.
• A U.S. registered-agent address or a virtual office is not, by itself, where senior officers direct the business, so it doesn't meet that definition.
• The USPTO says a P.O. box usually isn't acceptable as a domicile address. Listing one next to a street address can trigger an Office Action asking which address is your domicile.

You must give your domicile address in your filings and keep it up to date. Don't be tempted by services that offer a U.S. address so you can file "as a U.S. applicant." The USPTO warns that false domicile information exposes the application to sanctions, and a resulting registration to expungement or reexamination.

Five Ways to File

37 C.F.R. § 2.34 sets out the filing bases. Foreign owners can use any of them, and they can be combined in one application.

The six-month priority window comes from the Paris Convention, and our Paris Convention guide explains it. It's worth planning around. If someone else files a similar mark in the U.S. in month three, your 44(d) claim puts you ahead of them.

A Madrid designation still goes through U.S. examination. The U.S. attorney rule can still bite: a foreign owner who has to respond to the USPTO, for example to an Office Action, needs a U.S.-licensed attorney to do it. For Madrid files the response period is six months, not three (37 C.F.R. § 2.62).

What It Costs

USPTO fees, from the current fee schedule:

• Direct application (Sections 1 and 44): $350 per class, plus $100 per class if information is missing and $200 per class if you use free-text goods and services instead of the ID Manual.
• Madrid designation of the U.S.: the USPTO's fee is $600 per class, paid through WIPO, on top of WIPO's own fees.
• Later steps: $150 per class for a Statement of Use if you filed on intent to use, and $125 to extend the deadline for responding to an Office Action.

The attorney is the bigger variable. Our attorney cost guide covers typical price ranges. Get a written quote that says whether it includes responding to Office Actions, because that's where costs grow.

How to Choose an Attorney, and Check Them

• Ask for the bar details (state, bar number, year of admission) and check them on that state bar's public directory.
• Make sure they file from their own USPTO.gov account. The USPTO says a genuine attorney files through their own verified account and never needs your password. If you're represented, you can e-sign the forms they send you without verifying your own identity with the USPTO.
• Be wary of very cheap packages from foreign filing firms that "include" a U.S. attorney. The USPTO describes a scam in which firms use a U.S. attorney's name and bar number with little or no involvement from the attorney, specifically to get around this rule. Filings like that can be sanctioned. Check that the attorney named on your file in TSDR is the person you agreed to hire.
• Expect letters from strangers. Once your application is public, private companies send official-looking invoices for "publication" or "registration." Here's how to recognise them.

A Practical Sequence

1. Search the USPTO database for similar marks before spending anything. Your attorney should run a full clearance search.
2. Decide the basis. If you filed at home in the last six months, consider 44(d) so you keep that date.
3. Prepare the goods and services list using the USPTO's ID Manual. Free-text descriptions cost an extra $200 per class.
4. Have the attorney file and appoint themselves, with your correct domicile address.
5. Track the file in TSDR, so you can read any Office Action as soon as it issues and answer it on time.