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.

USPTO source ↗

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.

USPTO source ↗

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.

USPTO source ↗

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.

USPTO source ↗

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.