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

If you’re based outside the U.S., you can still file directly with the USPTO. You must appoint a U.S.-licensed attorney, choose the right filing basis, prepare a tight goods and services list, and file electronically through TEAS. Even if you rely on a foreign filing, you’ll need U.S. use to keep rights long term.

We file these every week. Below is the process we walk clients through and where foreign applicants often get tripped up.

Do I need a U.S.-licensed attorney if I’m foreign-domiciled?

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

Why it matters: your attorney must sign submissions, receive Office Actions, and manage deadlines at the USPTO. We routinely step in after self-filed attempts get stuck for lack of U.S. counsel and missable formalities.

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

You have four bases for a direct U.S. 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 U.S. 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 U.S. 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 U.S. within 6 months to claim that priority. You still need a U.S. 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 U.S. without showing pre-registration U.S. use, 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 U.S. application moving and avoids losing time.

{{IMAGE: Decision tree showing 1(a) vs 1(b) vs 44(d) vs 44(e) selection | Picking a filing basis based on current use, timing, and foreign rights }}

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

You can request U.S. protection as a Madrid Protocol extension of protection under Section 66. The USPTO will still examine it under U.S. law. If the USPTO issues an Office Action, foreign-domiciled owners must appoint a U.S.-licensed attorney to respond. Madrid can be efficient, but be careful with your identification of goods and services. If the home filing uses broad or non-U.S. terms, you may 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 U.S. filing with a U.S.-tailored identification, especially for software and retail services.

What must every U.S. application include?

Every application must include certain core elements, filed electronically through TEAS. 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 specific statements and evidence each basis requires
• Government filing fees for at least one class
• Emails for the owner and attorney

You’ll also sign USPTO-required verifications. These are sworn statements made under penalty of perjury by someone with legal authority to bind the owner.

{{IMAGE: Annotated mock-up of the TEAS application form highlighting required fields | The TEAS fields that foreign applicants must complete }}

How do specimens and verifications differ across bases?

Here’s 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 can work. For services, a website showing the mark with the services and a way to order can work.
• Section 1(b): No specimen at filing. You must 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 to move forward.
• Section 44(d): Provide the foreign filing country, application number, and date to claim 6-month priority. You still need a U.S. basis to register.
• Section 44(e): Submit a copy of the foreign registration. If it’s not in English, include an English translation signed by the translator. No specimen for registration, but use will be required later to maintain the registration.

Practice note: Many refusals come from bad specimens. Screenshots that don’t show a way to purchase, or mockups that are not used in ordinary trade, are common pitfalls. If you are unsure, review our guide on Trademark Specimens: What the USPTO Accepts and Rejects.

How should I draft the identification of goods and services?

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

For help matching your offering to the right classes, see Nice Classification: How to Choose the Right Trademark Classes.

{{IMAGE: Side-by-side comparison of overbroad vs acceptable identifications, with edits | Tighten broad IDs into USPTO-acceptable terms }}

What does “use in U.S. 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 U.S. interstate commerce. For services, the mark should be shown while the services are offered to U.S. customers with the services actually rendered.

You can register without pre-registration use under 44(e) and 66, and under 1(b) you will prove use later via a Statement of Use. But to keep rights, you must continue U.S. use. Nonuse for three consecutive years is prima facie evidence of abandonment under the Lanham Act.

If you are on a 1(b) path, our deeper explainer on Statement of Use (SOU): What It Is, When to File, and How to Avoid Abandonment covers timing and evidence.

What is the filing process step by step?

Here is the practical flow we use with foreign clients.

1) Confirm domicile and appoint U.S. 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 reduces the risk of a costly refusal later. If you need help, our Trademark Search team can run a U.S. and key-market screen before you spend on filing.

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 through TEAS. 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 will receive an Office Action with a response deadline. If you get one, read our guide on How to Respond to a USPTO Office Action: Step-by-Step.

7) Publication and registration. If approved, the mark is published for opposition. For 1(a) and 44(e), the USPTO will move to registration if no opposition is filed. For 1(b), you will receive a Notice of Allowance and then must file a Statement of Use.

8) Post-registration maintenance. Between the 5th and 6th year after registration, you must file a declaration of continued use. Keep using the mark in the U.S. to avoid vulnerability to cancellation for nonuse.

{{IMAGE: Process timeline from filing to registration and maintenance checkpoints | The U.S. trademark lifecycle for foreign owners }}

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. Mockups and investor decks do not show use. Use webpages 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 U.S. filing often gives you cleaner identifications and easier amendments.

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

Should I combine bases?

Often yes. Common strategies include:

• File 1(b) now to lock in a U.S. filing date, and add 44(e) later once your home registration issues.
• Start with 44(d) within 6 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 Statement of Use after allowance.

Combining bases preserves speed and flexibility while you build U.S. 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 U.S.-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

A note on costs and timelines

Government fees depend on the number of classes and the TEAS option selected. We do not quote USPTO fees here because they change. Expect at least one round of examiner questions in many cases. Budget for that response and any needed amendments.

If you want a counsel-led estimate tied to your exact classes and basis, contact us and we will scope it in writing before we file.

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 U.S. trademarks daily for clients headquartered outside the U.S. We also coordinate portfolios across 107 jurisdictions so your U.S. position fits your wider brand plan. If you need a practical path from first filing to enforceable rights, we are ready to help.