Can a Foreigner Register a Trademark in the US

One of the world's largest economies is the United States of America and the US is home to many of the products which are available worldwide. The US market is a highly saturated market which makes introducing a new product difficult.

Smaller brands need protection for their intellectual property and business owners need to establish a recognizable brand. This is achieved through trademark registration, which helps the business owners to protect their intellectual property such as the brand logo, company name, etc. 

Trademark registration in the US is handled by the United States Patent and Trademark Office (USPTO). USPTO, from 3 August 2019, has implemented a new rule for trademark registration for foreign residents and companies. This new rule necessarily requires foreign residents and companies to hire a licensed US attorney to file a trademark application before the USPTO. 

This new USPTO rule has huge implications for all companies and individuals residing outside of the US. It also makes trademark registration for non-US residents and companies without a US attorney difficult. 

Rules for Foreigners Registering a Trademark in the US

The new USPTO rule now requires all non-US residents and companies to be represented by a licensed US attorney. In some cases, an authorised foreign attorney is also permitted by the USPTO to act as the licensed attorney (i.e., a registered Canadian attorney). This new rule applies to all trademark application, which includes:

  • All applications for registration and all fillings connected to the processing of the application
  • All renewals and other filings needed to maintain an existing registration
  • All proceedings before the Trademark Trial and Appeal Board. 

USPTO issues an office action to all the applications, which gives them 6 months to hire a US attorney or a licensed USPTO attorney. The foreign applicants need to hire a foreign attorney who can show that he/she is an active member of the bar and also has a good standing in the bar.

This new rule also allows the applicants to hire a foreign attorney, but doing so requires the foreign attorney to show that they are a member of their country’s trademark office. Showing this allows foreign attorneys to represent foreign applicants in front of the USPTO.

However, the USPTO only recognises the foreign attorney of countries that have an official understanding with their trademark office and USPTO. This understanding also works the other way around, as a US attorney gets similar privileges in the foreign country with which USPTO has an official understanding. 

If the foreign applicants have already registered for a trademark in their own country, then they can use that registration to file for trademark registration with USPTO. Basing your USPTO application on your own country’s trademark application allows for faster approval with USPTO.

However, having a trademark registration in your own country is not a prerequisite for a trademark application with USPTO. A trademark granted by USPTO is important as it ensures that there is no conflict with existing trademarks and if in case there exists a conflict, then USPTO requires the foreign applicant to alter their trademark to resolve the conflict.  

Vakilsearch can help you in preparing and filing your application on your behalf. The Vakilsearch team also houses expert US attorneys which can help you register your trademark under the new rules for registration. 

Why Hire a US Attorney?

USPTO mandates the hiring of a US attorney for foreign applicants and this is mandated for many reasons, such as:

  • A US attorney ensures that the trademark is maintained so that the integrity of the trademark register remains intact
  • A US attorney ensures that no foreign applicant submits inaccurate information. Inaccurate information may prove to be detrimental to the applicant, the trademark register, and USPTO 
  • A US attorney ensures that the foreign applicant does not overpay for trademark registration services and increases the reliability of the trademark application.


What to Expect After Filing?

After a trademark application is submitted to the USPTO, the review process takes around 4 to 6 months. During this review process, if the application is found to violate the established criteria, an office order can be issued by USPTO. This office order can pause all proceedings regarding the application until the identified issues are resolved. 

If all the identified issues are resolved, an official publication will follow with USPTO’s official trademark bulletin. This bulletin contains all the newly registered trademarks. The foreign applicant should check the official bulletin every 6 months until they see that their application has been accepted.

It is advised not to miss any deadline or update because missing any of them may lead to the application being denied relief, in case the need arises during the latter stages of the review process.

In case the review process does not identify any issues, USPTO gives other trademark owners 30 days to review the trademark. At this time, the other trademark owners may file an objection if there exists a conflict between their trademark and the trademark application.

If no objection is filed within 30 days, then the trademark application will be accepted and USPTO registers your trademark. USPTO will issue a registration certificate and the entire process of getting your trademark registration takes around 12-18 months. 

Other trademark owners are given 30 days for review and during this time, they can file an opposition if there exists a conflict with their trademarks. If no claims are filed within 30 days, then the USPTO will register your trademark. Soon after that, USPTO will issue a trademark registration certificate and the entire process takes around 12-18 months. 

Vakilsearch can help you with the cheapest way to file a trademark application in the United States. Vakilsearch will do trademark research, select trademark classes, prepare the application and the required documents, and apply and monitor the Examination – Publication – Registration process by assigning a licensed trademark attorney in the United States.

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