How Can non-US Applicants seek a US Trademark? (Photo credit Andrew Stutesman via Unsplash.com)

How Can a Non-US Applicant Seek a US Trademark Registration?

The marketplace is no longer tied to localities - it is global.  Especially with the internet and e-commerce, but also with drop shipping and traditional cargo options aplenty, companies are no longer limiting their sales to one area or jurisdiction in particular.  Multi-national markets have become more the norm than the exception.  Trademarks are a very important aspect of a company's commercial efforts.  However, trademarks are jurisdictional in nature, in that every country has jurisdiction over trademarks registered and/or protected within it.  Very often, the US marketplace is a very attractive area of expansion for a non-US based sole proprietor or business entity, and the USPTO (United States Patent and Trademark Office) is the authority in charge of federal US trademark registrations.  A federal trademark not only solidifies your brand's identity in the U.S. but also provides legal backing to prevent infringement. But, is it even possible as a non-US citizen and/or resident to file for a federal US trademark registration?  This guide will walk you through how non-US-based individuals and entities can register a U.S. federal trademark.

Why Register a Trademark in the US?

The U.S. represents one of the largest consumer markets in the world, and is very lucrative for businesses that sell goods and/or services. A registered trademark offers several advantages, such as:

• Obtaining Exclusive Rights: Federal registration grants exclusive rights to use your trademark across the entirety of the U.S. for the goods or services specified.
• Attaining Legal Protection: You gain the ability to take legal action against others infringing on your mark by using a similar mark for similar goods/services in the US.
• Valuable Customs Protection: You can submit your registered trademark to U.S. Customs to block the import of counterfeit goods bearing your trademark into the US.
• Enhanced Brand Value: A registered trademark increases brand credibility and is considered an asset that adds intrinsic value to your business.

Can Non-US Applicants Actually Register a Trademark in the US?

Yes!  Non-US applicants are eligible to file for a US federal trademark registration, but they have to follow additional rules.  For instance, the main additional requirement is that non-US-domiciled applicants must be represented by a US-licensed lawyer at every stage of the trademark application process.  Therefore, it is not possible to use an online "Do it Yourself" filing site, nor even to use a foreign licensed attorney (unless they obtain a local, US counsel to do the work and sign all documents).  This rule change has come about in the last several years and applies to all aspects and phases of the USPTO trademark process (ie. new applications, renewals, assignments, maintenance, etc.)  

You should consider this requirement as helpful rather than a hindrance.  An experienced US trademark attorney helps you navigate through the trademark application process and will handle all the back-and-forth correspondence with the USPTO and take care of issues that may arise during the registration process (such as office action refusals).  In that way, having an experienced trademark attorney representing you is a good way to maximize the chances of actually being successful with your trademark application.

Steps to Apply for a US Federal Trademark as a Non-US Applicant

The procedure for filing as a Canadian is very similar (beyond the requirement of an attorney) to the process faced by a US applicant.  Obviously, the US-licensed attorney will handle much of this process, with input from you, the client.  An experienced US trademark attorney will always recommend that you first conduct a comprehensive search and have them do a Clearance Opinion to make sure that there are not any pre-existing trademarks (US, State, or unregistered common law) which could cause problems in your quest to register a trademark.  Though such a search and Clearance Opinion is not required by the USPTO, they are generally a wise strategy to avoid having to potentially rebrand later.

What Basis to Use for your Trademark Filing?

One of the most important preliminary steps is to determine the basis for your US trademark application.  As a non-US-domiciled applicant, you actually have several options available.  While it is always advisable for you to consult with your attorney about the pros and cons of each, here is a brief rundown of those options (again, irrespective of which option you pursue, you will need a US-licensed attorney representing you).

• You can file based on Actual Use in the US (just like a US applicant, Sec. 1(a)) - You can use this option if you are already using your trademark commercially within the US

• You can file based on a bona fide Intent to Use (just like a US applicant, Sec. 1(b)) - You will not register until you prove use. If you complete the examination and publication phases with no obstacles, you get a Notice of Allowance, and then get 6 months to prove use. That 6-month period can be extended for up to 36 months 

• You can file on the basis of a foreign pending trademark application (Sec. 44(d))- You will not register until you provide proof that the foreign application has resulted in registration (your application will be suspended until you can prove that). You do not need to prove use in the US. You are limited to the same goods as listed in your foreign application.

• You can file on the basis of a foreign trademark Registration (Sec. 44(e)) - The foreign registration must be from your country of origin and be a country with which the US has a treaty. You again are limited to the same goods/services in your foreign registration (and must provide a certified translation of the foreign registration). The foreign registration must be valid. You do not need to prove use in the US.

• You may be able to seek extension of a foreign application/registration via the Madrid Protocols (Sec. 66(a)) from your country of origin (assuming that country is a member of the treaty).

Each of the foregoing options comes with certain positives and negatives. It is always recommended that you consult with your trademark attorney to select which option makes the best sense for your given circumstances.  

How Long Does the Process Take?

The application and registration process is a long one, and there are no ways to expedite that process.  The USPTO is currently taking over 12 months to process an application (between the time of filing of the application and a final decision).  Obviously, if you select one of the options that requires additional filings (ie. Intent-to-Use; or 44(d)), there will be additional time that will depend upon when you are ready to prove that you have begun actual use in US commerce, or when your foreign trademark application has been granted, such that you can provide proof of a trademark registratoion

Maintaining Your U.S. Trademark

Once your trademark application is approved and your trademark is registered at the USPTO, that is a good beginning!  However, it is not the end of the process, as in the US there is a requirement for continuous use, and maintaining/renewing your US trademark registration at regular intervals.  Thus, to keep your trademark registration, you will have to keep using the mark and make the following filings.  

• Between the fifth and sixth years after the registration date 
  File a Declaration of Use and/or Excusable Nonuse under Section 8
• Between the ninth and 10th years after the registration date
  File the first combined Declaration of Use and/or Excusable Nonuse (Section 8) and an Application for Renewal (Section 9)
• Every 10 years after that (between the 19th and 20th years, 29th and 30th years, etc.) 
  File subsequent Declarations of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9

Failure to meet these deadlines can result in the cancellation of your trademark.  Again, just like the application process, this phase requires that you file through a US-licensed trademark attorney, since you are a non-US-domiciled applicant. 

Final Thoughts

Expanding your brand into the US is an exciting venture that can be financially rewarded.  However, make sure that you follow the necessary steps to ensure your valuable trademark is likewise protected in the US. Registering a federal trademark through the USPTO can grant you the exclusive rights and legal protections needed to operate confidently in the competitive US market.

If you're ready to file or need legal advice tailored to your situation, consult with a trademark attorney to guide you through the process with ease. A reputable attorney can help make sure your application is successful and your brand stays protected for years to come.  Our law firm is versed and experienced in assisting non-US-domiciled clients with the USPTO trademark process.

Protect your business. Protect your brand. Take the first step toward registering your U.S. trademark today.  Contact us for a free initial consultation!

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