Trademark Thoughts with Tiffany™: Foreign Company Wanting US Protection?

The United States is one of the world’s largest consumer markets, and many international businesses want to protect their brands here. If your business is based outside the United States, there’s an important rule to know upfront.

The U.S. counsel requirement.

Applicants whose domicile (residence) is outside the U.S. must be represented by an attorney licensed in the United States to file and manage trademark matters with the United States Patent and Trademark Office (USPTO). This applies to both individuals and companies alike.

Why the rule exists.

It helps ensure that filings meet U.S. legal standards and that there is an accountable representative on the record. This rule also helps to combat against fraudulent or improper filings.

What a U.S. attorney on the record does for you:

• Confirms who the correct applicant is and how ownership should be stated.

• Reviews your mark and searches U.S. records for conflicts.

• Helps you choose the right filing basis, since requirements differ depending on whether you already use the mark in U.S. commerce or are planning to.

• Prepares the description of goods and services in a way that the USPTO will accept.

• Handles correspondence, deadlines, and any issues raised by the examiner.

Trademark rights are territorial.

Trademark registration in your home country doesn’t automatically give you rights in the United States, and vice versa. If you plan to sell products or provide services here, you’ll want your own U.S. protection.

Beware of unofficial services.

Some companies advertise filings without disclosing that they are not law firms. Check who is actually representing you and who will appear as your attorney of record.

Working across borders is easier when your counsel is remote.

As a virtual firm, VirtuEdge Legal can meet with clients in any time zone. Schedule a chat if you’d like to discuss your U.S. filing.

This is general education and is not intended to be legal advice. For guidance on your specific situation, consult with a licensed attorney.