Filing a US Trademark from Outside the United States: What Foreign Applicants Need to Know

If you are based outside the US, you can still file directly with the USPTO. You must appoint a US-licensed attorney, choose the right filing basis, prepare a tight goods and services list, and file electronically. Even if you rely on a foreign filing to register, you will need real US use to keep the registration long term.

We file these every week. Below is the process we walk clients through, what it costs, how long it takes, and where foreign applicants most often get tripped up.

Do I need a US-licensed attorney if I am foreign-domiciled?

Yes. If your principal home, or your company's principal place of business, is outside the US, you are foreign-domiciled. In USPTO matters, foreign-domiciled applicants must be represented by a US-licensed attorney. This applies to direct filings and to Madrid extensions once the case is before the USPTO.

Why it matters: your attorney signs submissions, receives Office Actions, and manages deadlines at the USPTO. A GTC US-licensed attorney acts as counsel of record on every filing we make for a client outside the US. We routinely step in after self-filed attempts stall for lack of US counsel.

What does it cost and how long does it take?

The USPTO charges USD 350 per class for the single base application. There is one application form now; the old TEAS Plus and TEAS Standard tiers were removed on 18 January 2025, so the choice you may have read about no longer exists.

Later government fees depend on your path. An intent-to-use applicant files a Statement of Use at USD 150 per class, and each six-month extension of time to file it costs USD 125 per class. Our attorney fee for a US filing, and the all-in total by class count, is on the pricing page.

On timing, most uncontested US applications take about 12 to 18 months from filing to registration. Examination alone usually takes several months to reach a first review. An Office Action adds a response round. An intent-to-use application also waits for you to show use after the Notice of Allowance. Our US country guide has the full timeline.

What are my filing path options, and how do they differ?

You have four bases for a direct US application. Pick the one that fits your situation, or combine where allowed.

• Section 1(a) use in commerce: You are already using the mark in US interstate commerce. You must provide first-use dates and a specimen, which is evidence of real-world use.
• Section 1(b) intent to use: You have a bona fide intent to use the mark in US commerce. No specimen at filing, but you must later submit a Statement of Use after allowance, with proof of use.
• Section 44(d) foreign application priority: You filed in your home country first. File in the US within six months to claim that priority date. You still need a US basis to register, often pairing with 1(b) or converting to 44(e) once the foreign registration issues.
• Section 44(e) foreign registration: You own a valid home-country registration for the same mark and goods or services. You can register in the US without showing US use first, but you will need to show use later to maintain the registration.

Tip from practice: if your foreign registration is pending but close, we often file under 1(b) now and add 44(e) later when the home registration issues. This keeps your US application moving.

Can I claim priority from my home-country filing?

Yes, and this is the most under-used tool for foreign applicants. Under the Paris Convention, you have six months from your first filing anywhere to file in the US and claim that earlier date. The USPTO then treats your US application as if it had been filed on the home-country date for priority purposes. That protects you against anyone who files in the US in between.

The window is strict. Calendar it on the day you file at home, and send us the foreign application number, country, and filing date so we can put the claim in the US application.

What if I prefer the Madrid Protocol instead of filing directly?

You can request US protection as a Madrid Protocol extension under Section 66. The USPTO examines it under US law. If the USPTO issues an Office Action, foreign-domiciled owners must appoint a US-licensed attorney to respond. Madrid is efficient, but be careful with your identification of goods and services. If the home filing uses broad or non-US terms, you can face indefiniteness refusals that are hard to fix within Madrid's limits.

When a client's base list is too broad, we usually recommend a parallel direct US filing with a US-tailored identification, especially for software and retail services.

What must every US application include?

Every application must include certain core elements, filed electronically. Missing or weak inputs cause delays or refusals.

• Applicant identity and domicile, plus entity details and citizenship or country of organization
• A clear drawing of the mark, word or logo
• Goods and services grouped by international class
• At least one filing basis, with the statements and evidence that basis requires
• Government filing fees for at least one class
• Email addresses for the owner and the attorney

You will also sign USPTO verifications. These are sworn statements made under penalty of perjury by someone with authority to bind the owner.

How do specimens and verifications differ across bases?

Here is what the USPTO expects at filing or later, depending on your basis.

• Section 1(a): Provide first-use dates and at least one acceptable specimen per class. For goods, a product label, packaging, or point-of-sale display works. For services, a website showing the mark with the services and a way to order works.
• Section 1(b): No specimen at filing. You later submit a Statement of Use with specimens and dates. If you need more time to launch, extensions are available for a period, but use must begin for the application to move forward.
• Section 44(d): Provide the foreign filing country, application number, and date to claim six-month priority. You still need a US basis to register.
• Section 44(e): Submit a copy of the foreign registration. If it is not in English, include a translation signed by the translator. No specimen is needed for registration, but use will be required later to maintain it.

Practice note: many refusals come from bad specimens. Screenshots that do not show a way to buy, or mock-ups never used in trade, are the usual culprits. Our specimen guide shows what the USPTO accepts and rejects.

How should I draft the identification of goods and services?

Start narrow and precise. US examiners want clear, definite terms. Over-broad lists copied from foreign registers often get refused. Use plain terms a buyer would understand, grouped by Nice class. If your product line will expand, file a separate application later rather than stuffing everything into one overbroad list.

If you are unsure which classes fit your business, Class Assist maps your goods and services to the right ones.

What does "use in US commerce" really mean, and when is it required?

Use means bona fide use of the mark in the ordinary course of trade, not token or test shipments. For goods, the mark should appear on the product, packaging, or at point of sale, and the goods must move in US interstate commerce. For services, the mark should be shown while the services are offered to US customers and actually rendered.

You can register without prior US use under 44(e) and 66, and under 1(b) you prove use later through a Statement of Use. But to keep rights, you must continue US use. Three consecutive years of nonuse is prima facie evidence of abandonment under the Lanham Act.

If you are on a 1(b) path, our Statement of Use service covers timing, evidence, and extensions.

What is the filing process step by step?

Here is the practical flow we use with foreign clients.

1. Confirm domicile and appoint US counsel. This is mandatory for foreign-domiciled owners. We also set a separate correspondence address if you want to keep a home address off the public record.
2. Search for conflicts. A proper clearance search cuts the chance of a costly refusal later. Start with a free trademark check and we will tell you whether a full US and key-market screen is worth running.
3. Choose the filing basis. Decide among 1(a), 1(b), 44(d), or 44(e), or a combination, based on your timeline and foreign rights.
4. Prepare the mark drawing and goods or services. Draft clear identifications by Nice class, and collect specimens if filing 1(a).
5. File. Your attorney files, signs the declarations, and pays the government fees.
6. Examination and Office Actions. A USPTO examiner reviews the filing. If issues arise, you receive an Office Action with a response deadline. Our guide on How to Respond to a USPTO Office Action explains the steps.
7. Publication and registration. If approved, the mark is published for opposition. For 1(a) and 44(e), the USPTO registers the mark if no opposition is filed. For 1(b), you receive a Notice of Allowance and then file a Statement of Use.
8. Post-registration maintenance. Between the fifth and sixth year after registration, you file a declaration of continued use. Keep using the mark in the US so the registration is not vulnerable to cancellation for nonuse.

Common pitfalls we fix for foreign applicants

We see the same patterns again and again. Here are three to avoid.

• Indefinite identifications. Borrowed lists like "computer software" alone draw refusals. Say what the software does, for whom, and on what medium.
• Specimen problems. Mock-ups and investor decks do not show use. Use web pages with ordering capability for services, and real packaging or labels for goods.
• Over-reliance on Madrid. Madrid is efficient, but if your base is broad or unstable, a direct US filing gives you cleaner identifications and easier amendments.

A recent client in consumer electronics tried a Madrid extension with a base identification that read like a catalog. The case stalled on indefiniteness. We filed a parallel direct US application with a tightened identification and cleared examination in one round.

Should I combine bases?

Often yes. Common strategies include:

• File 1(b) now to lock in a US filing date, and add 44(e) later once your home registration issues.
• Start with 44(d) within six months of your first foreign filing to claim priority. If the home registration issues in time, pivot to 44(e). If not, keep 1(b) as a backstop and move to a Statement of Use after allowance.

Combining bases preserves speed and flexibility while you build US use.

Documents and details checklist for foreign filers

Gather these before we draft:

• Owner's legal name, entity type, and domicile address
• A separate correspondence address if you prefer not to display the domicile publicly
• Attorney appointment details so we can sign USPTO filings
• Mark drawing file (word or high-contrast logo)
• Goods and services by class, in clear US-acceptable terms
• For 1(a): first-use dates and specimens per class
• For 44(d): country, application number, and filing date of the foreign application
• For 44(e): copy of the foreign registration, plus an English translation signed by the translator if not in English

Work with an attorney-led team that files globally

As an attorney-led firm founded in 2016, with 11 in-house lawyers across 5 offices, we file and prosecute US trademarks daily for clients headquartered outside the US. We also coordinate portfolios across 107 jurisdictions so your US position fits your wider brand plan. Our US trademark service covers search, filing, counsel of record, and the response to any Office Action. More common questions are in our FAQ.

Sources

• USPTO: Trademark fee information
• USPTO: Trademark rule requires foreign-domiciled applicants and registrants to have a US-licensed attorney
• USPTO: Basis for filing