Resource
U.S. Trademark Filing Checklist for Foreign Firms
The points below account for most of the avoidable trouble in U.S. prosecution of foreign-originating marks. It is educational and does not replace matter-specific U.S. advice.
Before sending a new U.S. filing
- Confirm the exact legal owner. Do not default to a distributor, U.S. subsidiary, director, or the referring firm unless that party actually owns the mark.
- Provide the owner's true domicile or headquarters street address. A post-office box or care-of address will generally not establish domicile.
- Confirm the mark format: standard characters, design or stylized, color claim, sound, or other special form.
- Give the exact commercial scope of the goods and services, and flag any wording that must not be narrowed without client approval.
- Identify the intended filing basis for each class, with the supporting facts and documents.
- List every priority, response, opposition, statement-of-use, and maintenance deadline in both local time and U.S. Eastern Time.
Section 44(d): foreign priority
- A U.S. priority claim must generally be asserted within six months of the qualifying foreign application filing date.
- Provide foreign country, filing date, application number, owner, mark, and goods and services.
- Confirm whether an earlier foreign application for the same mark and goods may affect the claim.
- Remember that Section 44(d) is a priority basis and not itself a basis for registration.
Section 44(e): foreign registration
- Provide the official registration certificate or office-issued document showing owner, mark, and goods and services.
- Confirm the registration remains in force.
- Provide a translation signed by the translator if the document is not in English.
- Confirm the registration is from the applicant's country of origin.
Sections 1(a) and 1(b): U.S. use
- For Section 1(a), provide actual U.S. use-in-commerce dates and genuine specimens for each class.
- For Section 1(b), confirm a bona fide intent to use the mark in U.S. commerce. Specimens come later, with an allegation of use.
- For webpage specimens, preserve the URL and the date accessed or printed.
- Do not submit mockups, printer proofs, digitally altered images, or anything created solely to manufacture filing evidence.
Madrid and Section 66(a)
- A foreign-domiciled Section 66(a) applicant must appoint U.S.-licensed counsel to respond to a provisional refusal.
- The response period is generally six months from the USPTO issue date, and the optional three-month extension does not apply.
- Send the full WIPO and USPTO refusal, the current identification, owner information, and any related foreign prosecution history.
Avoidable problems, in rough order of frequency
- Wrong owner or entity type
- Incomplete domicile information
- Overbroad or unclear goods and services
- Free-form identification language where Trademark ID Manual wording would serve, which carries an avoidable per-class surcharge
- Unverified specimens or dates of use
- Late priority or response instructions
- Assuming a foreign registration makes U.S. registrability automatic
- Credential sharing, or filing through a U.S. attorney's account without that attorney's direct review
What this is not
This is general information about U.S. procedure, not advice on your matter. It does not create an attorney-client relationship, and it does not account for facts specific to a particular applicant, mark, or record.
Request a conflict check
If a filing or a refusal is affected by any of the above, send the party names and the deadline. Documents come after clearance.