A US trademark attorney for foreign applicants.
Since August 3, 2019, trademark applicants, registrants and TTAB parties whose domicile is outside the United States must be represented before the USPTO by a US-licensed attorney. We search and file US trademark applications for brands expanding into the American market, and we act as US counsel on every application we file.
Starting at $2,995 search and application package, which includes US counsel, plus USPTO filing fees of $350 per class
Yes. If your domicile (your principal place of business) is outside the United States, USPTO rules require you to be represented by an attorney who is an active member in good standing of the bar of a US state or territory.
The rule covers trademark applications, registrations, post-registration filings, and proceedings before the Trademark Trial and Appeal Board. A US mailing address or registered agent does not change where you are domiciled.
Do foreign companies need a US attorney to file a trademark?
They do. Since August 3, 2019, applicants and registrants domiciled outside the United States must be represented before the USPTO by an attorney licensed in a US state or territory.
The USPTO introduced the rule to curb inaccurate and fraudulent filings from abroad. It applies whether you file directly with the USPTO or reach it through an international registration, and it covers the whole life of the mark, including the application, responses to office actions, maintenance and renewal filings, and any TTAB proceeding.
In the opposition record, the share of foreign defendants with no law firm on record climbed to 55% in 2018 and fell to 37% in 2020, the first full year under the rule.
| Year | US | Foreign |
|---|---|---|
| 2016 | 37% | 47% |
| 2017 | 35% | 52% |
| 2018 | 34% | 55% |
| 2019 | 35% | 54% |
| 2020 | 35% | 37% |
| 2021 | 35% | 40% |
| 2022 | 34% | 38% |
| 2023 | 33% | 38% |
What counts as “foreign-domiciled” for a US trademark?
Your domicile is your principal place of business, where senior management directs and controls the business. The rule applies when that place is outside the US, even if you have a US mailing address or agent.
The USPTO asks every applicant for a domicile address and does not accept a P.O. box, a registered-agent address or a virtual office as one. A US subsidiary that runs its business from the United States and files in its own name is generally US-domiciled; a foreign parent filing in its own name is not.
Using a US address you don’t operate from to avoid the rule can put both the application and any registration at risk.
What happens if a foreign applicant files without a US attorney?
The USPTO will require you to appoint a US-licensed attorney, and the application can’t move forward until you do. If the requirement isn’t met in time, the application is abandoned.
At the TTAB, a foreign-domiciled party in an opposition or cancellation must appear through US counsel. A defendant without one is out of compliance and can’t defend the application as filed.
What if my US trademark application is opposed?
You’ll need US counsel to answer by the Board’s deadline, generally 60 days from the notice. If no answer is filed, the application can be refused by default.
Foreign-domiciled defendants in 2020 through 2023 matters went without a law firm 39% of the time, against 34% for US defendants. See how trademark oppositions work.
Which countries’ applicants are opposed most often in the US?
After the United States, China leads by a wide margin, with 8,941 oppositions from 2014 through 2023. Canada, the United Kingdom, Germany, and Australia follow with between about 600 and 1,100 each.
| Country | Oppositions 2014 through 2023 | Share | Trend | No firm on record |
|---|---|---|---|---|
| China | 8,941 | 14.3% | +330% | 48% |
| Canada | 1,074 | 1.7% | +1% | 26% |
| United Kingdom | 985 | 1.6% | +4% | 20% |
| Germany | 605 | 1.0% | −29% | 20% |
| Australia | 591 | 0.9% | −12% | 23% |
| South Korea | 545 | 0.9% | +28% | 18% |
| Hong Kong | 537 | 0.9% | +31% | 34% |
China
China-domiciled applicants faced 8,941 oppositions between 2014 and 2023, which is 14.3% of the total and roughly as many as every other foreign country combined. Yearly volume grew 330% from the 2014 through 2017 period to the 2020 through 2023 period. In matters from 2020 through 2023, nearly half of those defendants (48%) had no law firm on record.
Canada
Canada accounted for 1,074 oppositions over the decade, with volume flat year to year, and 74% of Canadian defendants appeared with counsel in matters from 2020 through 2023. Canada has a narrow alternative to the US-attorney rule. A Canadian trademark agent recognized by the USPTO may represent Canadian-domiciled parties. Many Canadian brands still use US counsel for TTAB and enforcement work.
United Kingdom
UK applicants faced 985 oppositions, with volume steady (+4%). In matters from 2020 through 2023, 80% were represented, among the highest rates of any country.
Germany
Yearly oppositions against German applicants fell 29% between the two periods, the largest drop in the table, for a total of 605. Of the German defendants in matters from 2020 through 2023, 80% were represented.
Australia
Australia’s 591 oppositions were down 12%, and 77% of its defendants had counsel on record in matters from 2020 through 2023.
Should I file directly with the USPTO or through the Madrid Protocol?
Madrid is efficient if you’re filing in several countries at once, while a direct US filing gives you more control over how your goods and services are described for US examination. Either way, you’ll need US counsel once the USPTO raises an issue.
On both routes, the USPTO examines the application under US rules.
- Madrid Protocol. One international application through your home office, extended to the US. For its first five years it depends on your home-country filing, and US examiners apply US rules to the goods and services wording.
- Direct US filing. Drafted for US examination from the start, with a choice of filing basis. It takes more setup and usually raises fewer wording issues during examination.
We work alongside home-country trademark counsel on either route.
How we work with foreign brands.
Check domicile and the name
We confirm whether the rule applies to you and search the mark before anything is filed.
File with US counsel
We file the application and stay on it as your US attorney of record, handling USPTO correspondence and deadlines in English.
Prosecute and maintain
Office actions, maintenance filings and any TTAB proceedings on the application, with your home counsel kept informed.
More questions.
Q01We have a US subsidiary. Do we still need a US attorney?
It depends on who owns the mark. If the US subsidiary is the applicant and its principal place of business is in the United States, it is generally US-domiciled. If the foreign parent is the applicant, the rule applies.
Q02Can we use a US virtual office or registered agent as our address?
Not as your domicile. The USPTO requires the address where the business is directed and controlled, and does not accept P.O. boxes, registered agents or virtual offices for that purpose.
Q03Do you work with our trademark counsel at home?
We do. Foreign firms regularly retain US counsel for USPTO and TTAB work, and we coordinate with them directly.
Q04Does the rule apply to renewals and maintenance filings?
Yes. Foreign-domiciled registrants must be represented by a US-licensed attorney for post-registration filings as well as applications.
Q05Can you take over an application another firm filed?
No. Modern Mark acts as US counsel on applications it files itself, as part of its search and application package.
Q06Our application was filed before 2019. Does the rule apply now?
The rule applies to filings and submissions made after it took effect, so new responses, maintenance filings and TTAB appearances generally need US counsel.
Related help.
Trademark Registration
A clearance search and strategy before a USPTO filing that holds up.
Trademark Oppositions
Received a Notice of Opposition? Your answer deadline and your options for defending or settling it.
Filed It Yourself?
Attorney help when a self-filed application gets an office action, refusal, abandonment, or opposition.
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