How To File a U.S. Trademark as a Foreign Business: An FAQ

Foreign entrepreneurs and companies often seek to protect their brands in the United States. The good news is that non-U.S. business owners can indeed file for a U.S. trademark, though there are special rules and requirements to be aware of. Below we answer frequently asked questions (FAQ) about how international applicants can register a trademark with the United States Patent and Trademark Office (USPTO). This includes the filing bases available, the requirement for U.S. legal representation, and other key considerations for foreign trademark applicants.

Can a foreign business register a trademark in the United States?

Yes. The USPTO allows foreign individuals and companies to register trademarks in the U.S. as long as they follow U.S. application requirements. You do not need to be a U.S. citizen or have an incorporated U.S. company to apply. Many overseas brand owners secure U.S. trademark protection to expand into the American market or prevent others from using their mark. However, foreign-domiciled applicants must adhere to certain rules, such as appointing a U.S.-licensed attorney (discussed below), and must meet the same standards of distinctiveness and non-conflict that apply to U.S. applicants.

Importantly, having a presence or sales in the U.S. is not a prerequisite for filing. Even if you have never sold a product or service in the U.S. yet, you can still apply for a trademark – either based on a good-faith intent to use the mark in U.S. commerce or based on an existing foreign registration or application (see next question). The key is to choose the appropriate filing basis and satisfy the associated requirements.

Do foreign applicants need a U.S.-licensed attorney to file a USPTO trademark?

Yes. If your permanent residence or principal place of business is outside the United States, you are required to have a U.S.-licensed attorney represent you in all USPTO trademark matters. This rule, introduced in August 2019, means foreign business owners cannot file a U.S. trademark application on their own; they must appoint an attorney who is licensed to practice law in the U.S. to file and handle the application on their behalf. The U.S. attorney will correspond with the USPTO, respond to any issues, and ensure the application meets U.S. legal requirements.

Even if your business has some presence in the U.S. (such as distributors or offices), if your legal domicile is abroad, a U.S. attorney is mandatory. The USPTO determines the requirement based on the applicant’s domicile address provided in the application. Engaging a qualified U.S. trademark lawyer is not only required by law in this case, but it can greatly help in navigating the process smoothly. Your U.S. attorney will assist with important steps like conducting a trademark search, preparing the application, and responding to any USPTO communications.

(Note: If you are domiciled in the U.S., hiring an attorney is optional – though often beneficial – but foreign applicants have no choice under the current rules.)

What are the “filing bases” for a U.S. trademark application?

Every U.S. trademark application must specify a filing basis, which is the legal ground under the Trademark Act that entitles you to apply. Foreign applicants have the same four filing bases available as U.S. applicants (plus an international option via the Madrid Protocol). The filing bases are:

• Use in Commerce – Section 1(a): You are already using the trademark in commerce in the United States. This basis is appropriate if your goods or services bearing the mark are already sold or transported in U.S. commerce (interstate or between the U.S. and a foreign country) at the time of filing. You’ll need to provide the date of first use and a specimen (example) of the mark’s use in the U.S. market.
• Intent to Use – Section 1(b): You have a bona fide intent to use the trademark in U.S. commerce in the near future. This lets you apply before you actually start using the mark. An application filed on 1(b) won’t register until you later submit proof of use (a “Statement of Use”) and pay an additional fee. This is a common route for foreign businesses that plan to enter the U.S. market soon but haven’t started sales yet.
• Foreign Application (Priority) – Section 44(d): You have filed an application for the same mark in your home country (or another country where you have rights) within the last 6 months. Section 44(d) allows you to claim that foreign filing date as your priority date in the U.S. In practice, a 44(d) claim is usually combined with another basis (such as 1(b) or 44(e)), because 44(d) by itself is just a temporary basis holding your place in line. It gives you the benefit of an earlier filing date if used alongside one of the other bases.
• Foreign Registration – Section 44(e): You own a registration for the same mark in your country of origin (e.g. where your business is incorporated or headquartered). With a granted foreign registration, you can apply in the U.S. based on that registration. A key advantage of the 44(e) basis is that you don’t need to prove use in the U.S. before registration – you can obtain the U.S. registration first, and then have up to five years after registration to start using the mark in U.S. commerce. This option saves time and effort for foreign businesses, allowing them to secure a U.S. registration in advance of launching in the U.S. market. (You will need to provide a copy of the foreign registration certificate and a certified English translation if it’s not in English.)
• International Application – Section 66(a) (Madrid Protocol): If your country is a member of the Madrid Protocol treaty, you can file an international application through your local trademark office and designate the United States for protection. The Madrid Protocol is a centralized system that lets trademark owners seek protection in over 120 countries via one application. A U.S. extension under Section 66(a) is forwarded by WIPO to the USPTO for examination. The benefit is convenience – one form, one set of fees, covering multiple countries at once. However, the USPTO will still examine your request as a U.S. application, and if any issues arise (e.g. an Office Action refusal), you will be required to hire a U.S. attorney to respond on your behalf. Also, keep in mind you always have the option to file directly with the USPTO instead of using Madrid. Many foreign applicants choose direct filing via a U.S. attorney for more control and flexibility, especially if the U.S. is a key market.

In summary, you must choose one or more of these bases when filing. It’s common to combine bases for foreign applicants – for example, an intent-to-use (1(b)) application that also claims priority (44(d)) from a recent foreign filing, or a foreign registration (44(e)) basis combined with intent-to-use. The USPTO will require that by the time your mark is ready to register, it has either actual use in the U.S. or an eligible foreign registration to serve as the registration basis. If you start with intent-to-use or 44(d) priority, you’ll need to submit evidence of use later (or amend to add 44(e) once your foreign registration issues) before the USPTO will grant the registration.

Do I need to be using my trademark in the U.S. before applying?

No, you do not have to be using the mark in the U.S. at the time you apply, as long as you file under an appropriate basis that doesn’t require current use. Many foreign applicants file with an “intent-to-use” (1(b)) basis when they haven’t entered the U.S. market yet. This allows you to secure a filing date and begin the registration process while you prepare to launch your product or service in America. After your application is examined and approved, you’ll eventually need to show proof of U.S. use (by filing a Statement of Use) to complete the registration. The USPTO gives a timeline (usually 6 months from a Notice of Allowance, with possible extensions) to submit your proof of use.

Alternatively, if you already have a foreign registration, you can file on the 44(e) basis and not have to show U.S. use before registration. In that scenario, the mark can register in the U.S. without a specimen of use. However, within about 5-6 years after registration, you will need to prove that the mark is in use in the U.S. by filing a Section 8 Declaration of Use (this is part of maintaining the registration). So, using your mark in commerce eventually is necessary to keep a U.S. trademark alive long term, but lack of early use is not a barrier to applying.

If you are already using the trademark in the U.S., then filing under Section 1(a) (use in commerce) is an option. In that case, you do need to submit details of your first use and a specimen showing the mark in use with your goods/services. Whichever path you choose, the important thing is that the USPTO will not give you a permanent registration without actual use in commerce at some stage – either you show use during the application (for 1(a) filings) or after approval (for 1(b) intent-to-use filings), or you rely on a foreign registration (44(e)) to initially register but still must eventually use the mark in the U.S. (by the maintenance deadline).

Bottom line: You can file before you have launched in the U.S., which is often wise to protect your brand name early. Just be prepared to follow through with usage requirements down the road.

Does my foreign trademark help me get a U.S. trademark?

Yes, it can. If you already registered your trademark in your home country (or another country where you have a base), that foreign registration can serve as a basis for your U.S. application under Section 44(e). Using a foreign registration has a couple of big advantages for a foreign applicant:

• No need to prove use at registration: You can obtain a U.S. registration without submitting U.S. use evidence up front, as long as your foreign registration is active. This allows you to secure the U.S. trademark before you fully enter the market. In fact, the law gives you a grace period of up to five years after the U.S. registration date to start using the mark in commerce. This is ideal for a company that wants to “reserve” its brand in the U.S. while still gearing up its U.S. operations.
• Streamlined application: Filing on a 44(e) basis can be more straightforward in some respects. You won’t need to submit a specimen of use during the application. Instead, you will provide a copy of your foreign registration certificate (with an English translation if needed) and a statement of your intent to use the mark in the U.S. As long as the goods/services in your U.S. application are covered by the foreign registration and the foreign registration remains active through the U.S. registration date, you can proceed to registration in the U.S. once the application clears examination.

Additionally, if you filed for a trademark in your country recently (within the last 6 months), you can claim that foreign application’s priority date (44(d)) in your U.S. application. This can backdate your U.S. filing date to the foreign filing date, giving you an upper hand against any intervening filers in that period. However, you’ll still need to eventually satisfy the requirements of either use or a foreign registration to complete the U.S. registration.

Important: The U.S. application must be for the same mark and same goods/services as the foreign application or registration for these options to apply. You cannot claim a foreign registration for a completely different mark or for unrelated goods. If your U.S. application expands beyond what your foreign registration covers, the USPTO will not allow the 44(e) basis for the excess goods/services.

In short, your foreign trademark rights can give you a head-start in the U.S. filing process – either by giving you a priority date or by serving as a basis to register without showing use. Most foreign applicants who have their mark registered at home will leverage that in the U.S. application because it saves time and money and defers the proof of use requirement.

Can I use the Madrid Protocol (international filing) to register in the U.S.?

Yes. The Madrid Protocol is an international treaty that offers a single application system for obtaining trademark protection in multiple countries. If your home country (or region) is a member of the Madrid System, you can file an international application through your local trademark office and designate the United States among the target countries. This approach can be very convenient – you file one application, in one language, with one set of fees, to potentially cover over 120 jurisdictions. The International Bureau of the World Intellectual Property Organization (WIPO) forwards your request to each designated national office (including the USPTO).

For foreign business owners, using Madrid to apply in the U.S. means you don’t initially need a U.S. attorney to file, since the filing is done through your home trademark office. The USPTO will treat it as a Section 66(a) application. However, it’s crucial to understand a few caveats:

• The USPTO will examine the Madrid-based request just like any direct U.S. application, applying all the same rules and standards. If the USPTO finds any issues – for example, a conflict with an existing mark or a technical requirement – they will issue an Office Action refusal. At that point, you will be required to hire a U.S. attorney to respond and remedy the issues. In fact, statistics have shown that the vast majority of Madrid filings designating the U.S. receive an Office Action (often for things like differing goods descriptions or needing a domestic attorney). So while you might save on attorney fees initially, you should be prepared to engage U.S. counsel if any hurdles come up.
• A Madrid application depends on your home application/registration for the first five years. If your base trademark fails or is withdrawn in that period, it can jeopardize the protection in all designated countries (this is known as the “central attack” risk). You could then convert the U.S. designation into a national application, but that involves additional cost. Direct national filings don’t have this dependency.
• Some flexibility is lost in Madrid filings. For example, all countries get the same list of goods/services from your international application. The U.S. often has stricter requirements for how goods/services are described. A direct U.S. application can be tailored to those requirements from the start, whereas a Madrid-based application might receive objections to the wording of the goods/services, requiring amendments.

In summary, the Madrid Protocol can be a useful tool to streamline multi-country trademark filings. If you plan to seek protection in many countries at once, it’s worth considering. But if the U.S. is a primary market for you, some experts recommend filing directly via a U.S. attorney for greater control. You always have the option to file directly in the U.S. without using Madrid. Many foreign applicants do choose direct filing, especially if they anticipate needing guidance through the U.S. process or if they want to avoid the Madrid limitations. It can be helpful to consult with a trademark attorney to decide which route – Madrid vs. direct USPTO filing – best fits your strategy.

How long does the U.S. trademark process take for a foreign applicant?

The timeline for obtaining a U.S. trademark is generally the same for foreign and domestic applicants. The USPTO examination queue and procedures apply equally. On average, it takes about 8 to 12 months (or more) to secure a trademark registration in the U.S., assuming there are no significant obstacles. In recent years, high filing volumes (including many foreign filings) have sometimes pushed timelines beyond 12 months.

Here is a rough timeline breakdown:

• Initial Examination: After you file an application (or after the USPTO receives your extension from WIPO, in the case of Madrid), an examiner typically reviews it in about 8–10 months (current backlogs as of 2024–2025). It can be faster (3–6 months) in some cases, but foreign filings have surged, contributing to longer wait times.
• Office Actions: If the examiner finds issues (likely for many Madrid filings, or any application that has conflicts or errors), they will issue an Office Action. You (and your U.S. attorney) have 6 months to respond. This can add a few months to the process, depending on how quickly the issues are resolved.
• Publication: If the application passes examination (or once issues are fixed), the mark is published in the USPTO’s Official Gazette for a 30-day opposition period. Assuming no oppositions from third parties, the application moves toward registration.
• Registration (or Notice of Allowance): For use-based or foreign-based (44e/66a) applications, the USPTO will register the mark after publication if all is in order. For intent-to-use (1b) applications, the USPTO will issue a Notice of Allowance, after which you must file your Statement of Use (proof of use) within 6 months (extendable up to 36 months in 6-month increments). Once an acceptable Statement of Use is filed, the registration will issue.

In total, straightforward cases with no hiccups can sometimes register in under a year, but it’s not unusual for it to take 12–18 months or longer. Foreign applicants should be mindful of these timelines and plan accordingly. It’s wise to file as early as possible once you have a brand name in mind for the U.S. market, because your filing date becomes your priority date — meaning even if it takes a year to register, no one else can cut in line after your filing date for a similar mark.

Finally, once you do get the registration, remember there are maintenance deadlines (the first one is between the 5th and 6th year after registration) where you’ll have to show the mark is in use in the U.S. and pay renewal fees to keep the registration alive. Managing these ongoing requirements is important for long-term protection.

Do I need a U.S. address or entity to apply for a trademark?

No. You do not need a U.S. mailing address, nor do you need to form a U.S. corporation or LLC, in order to apply for a U.S. trademark. A foreign individual or company can apply in their own name using their foreign address as the domicile address. The USPTO will correspond via the U.S. attorney you’ve appointed, so your physical address abroad is acceptable for the application records. In fact, the USPTO requires every applicant to provide their true domicile address (even if outside the U.S.) for the purpose of determining the attorney requirement and the applicant’s identity.

That said, you will need to have a U.S. attorney’s address for correspondence. When your U.S.-licensed attorney of record files the application, they will provide their contact information (address, email) for USPTO communications. This ensures that all official correspondence is handled domestically through your counsel.

There is no requirement to have any U.S. presence beyond this representation. Many foreign businesses successfully register trademarks in the U.S. without ever establishing a local company. Of course, if you do have a U.S. subsidiary or branch and prefer the trademark to be owned by that entity, you could file in the name of the U.S. company (which would then be a domestic applicant, potentially not needing outside counsel). But generally, a foreign business can own a U.S. trademark directly. Just remember the key requirement: a foreign-domiciled owner must have a U.S. lawyer handling the filing.

In summary, no U.S. address, citizenship, nor incorporation is required to file a U.S. trademark application. The trademark system is open to international applicants – you just need to follow the rules (such as the attorney rule) and meet the same standards of usage and distinctiveness that apply to everyone.

What’s the best approach for foreign business owners filing in the U.S.?

While the exact strategy can vary, here are a few best practices and tips for foreign applicants:

• Start with a Trademark Search: Before filing, it’s highly advisable to have your U.S. attorney conduct a clearance search for similar trademarks in the U.S. market. This helps uncover any existing registrations or applications that could conflict with your mark, saving you time and trouble early on.
• Choose the Right Filing Basis: Based on your situation, decide whether to file on actual use (if you’ve already started in the U.S.), intent-to-use (if you haven’t started yet), or using your foreign application/registration to your advantage. Many foreign filers use a combination – for example, intent-to-use plus a priority claim, or intent-to-use plus foreign registration to allow immediate registration. Use the basis that best fits your stage of business and available evidence.
• Prepare to Prove Use: Even if you utilize a foreign registration to get the U.S. registration quickly, plan for U.S. market entry within the first few years. Ultimately, only trademarks in use in U.S. commerce enjoy long-term protection and enforceability. Make sure you’ll be able to put the mark to use and document that use (labels, website screenshots, ads, etc. showing the mark with your goods/services) when the time comes.
• Work with Your U.S. Attorney Closely: They will help ensure the application is accurate, from properly identifying the applicant and listing goods/services in acceptable language, to satisfying formality requirements. This reduces the chance of Office Actions for correctable issues. If an Office Action does occur (for example, if the examiner needs a clarification or raises a potential conflict), your attorney will craft a response to address it. Having experienced counsel is invaluable, especially if you’re unfamiliar with U.S. trademark law nuances.
• Watch for Deadlines: Foreign time zones and mail delays won’t extend USPTO deadlines. Make note of key dates (Office Action responses, Statement of Use filings, renewal filings) and comply promptly, through your attorney, to avoid abandonment of your application or registration.

By following these practices, foreign applicants can greatly improve their chances of a smooth and successful U.S. trademark registration.

Secure Your U.S. Trademark – Next Steps (Call to Action)

Protecting your brand in the United States is a critical investment for any growing international business. The process can be complex, but you don’t have to navigate it alone. Working with a U.S. trademark attorney is not just a legal requirement for foreign filers, it’s a strategic advantage. A knowledgeable attorney will guide you through choosing the right filing basis, ensuring your application meets all requirements, and advocating for your rights through to registration and beyond.

If you’re ready to take the next step in trademark protection, our team is ready to assist. Contact us today for expert guidance on USPTO trademark protection for international businesses, and let’s grow your market together.