US Trademarks for International Brand Owners

No. Trademark rights are territorial. A registration in the EU, the UK, Canada, India, Australia, or anywhere else gives you no rights in the United States. Someone in the US can register your mark while your foreign registration sits there doing nothing about it. The only way to hold US rights is a US registration or genuine use of the mark in US commerce.

Yes, if you are foreign-domiciled. Since August 2019, USPTO rule 37 CFR 2.11 requires every applicant, registrant, and party whose domicile is outside the United States to be represented by an attorney licensed to practice in the United States. That includes Canadian filers. It applies to a Madrid extension of protection the moment the USPTO issues any refusal. It is not optional, and the USPTO will not process your filing without it.

Not if you file under Section 44(e) or Section 66(a). Both let you reach registration on the strength of your foreign rights, without ever submitting a specimen of US use. You do have to sign a verified statement of bona fide intention to use the mark in US commerce. This is the single biggest advantage foreign owners have over domestic applicants, who must prove actual use before anything registers.

Under Section 44(d), if you file your US application within six months of your first foreign application for the same mark and the same goods or services, the USPTO treats your US filing date as though it were the foreign filing date. That backdating can put you ahead of anyone who filed in the US during those six months. Miss the window and the priority claim is gone for good.

A Madrid designation of the United States is administered through WIPO and stays tied to your home registration for five years, so if the home mark falls the US extension falls with it. A direct Section 44 filing is a standalone US application from day one, independent of what happens at home, and it is examined without the extra layer of WIPO correspondence. Madrid is often cheaper when you are designating many countries at once. Direct filing is usually the better choice when the United States is the market that matters.

It covers a full clearance search, the correct US classification of your goods and services, preparation and filing of the application, monitoring, Office Action responses, and the USPTO filing fee for one class. If your mark covers more than one class, the fee is $1,500 per class. There is no separate charge for handling the foreign registration certificate, the translation requirement, or the priority claim.

Most trademark offices accept broad class headings. The USPTO does not. It requires goods and services to be identified with a level of specificity that many foreign registrations never contemplated, and your US identification can never be broader than what your foreign registration covers. Reconciling a broad European or Asian specification against the US Trademark ID Manual is the most common reason these applications receive an Office Action, and it is work best done before filing rather than after.

Yes. A provisional refusal on a Section 66(a) extension is handled the same way as any US Office Action, and you will need US counsel to respond. Send us the refusal and the international registration number and we will tell you what is being objected to, what the deadline is, and what it will cost to answer.

You have to prove use eventually, even though you did not have to prove it to register. A Section 44(e) registration requires a Section 8 declaration of use between the fifth and sixth anniversary of registration, then a combined Section 8 and Section 9 renewal every ten years. A Section 66(a) extension follows the same schedule but uses a Section 71 declaration instead. Miss either one and the registration is cancelled.

Yes, and we often do. Foreign counsel stay on the file, we act as US attorney of record, and correspondence runs whichever way suits you. We are equally happy working directly with the brand owner.

USPTO examination timelines move, so we will give you a current estimate rather than a number that ages badly. Expect several months to a first examination decision, longer if an Office Action issues. A priority claim under Section 44(d) does not speed up examination — it protects your place in line, which is a different and more valuable thing.

No. The flat fee covers the filing work described above and ordinary examination correspondence with the USPTO. It does not cover contested proceedings — oppositions, cancellations, or appeals before the Trademark Trial and Appeal Board — and it does not cover litigation in any court. Those are adversarial matters with their own timelines and costs. If one arises we will tell you what is happening and quote that work separately, in writing, before it starts.