US Trademark Filing Guide for Foreign Businesses

If your company is planning to expand to the United States, securing a trademark should be a top priority.

This is because registering a trademark in the United States will give your company the presumption of ownership in all 50 states and territories.

Moreover, the legal “priority date” on your trademark will be the day on which you submit your trademark application to the United States Patent and Trademark Office. This date becomes very important if another company attempts to file a similar trademark. This is because the USPTO will ultimately refuse any similar trademark filed after your application.

In this article, we’ll explore key tips and strategies for foreign companies filing U.S. trademarks.

The importance of U.S. trademark registration for foreign companies

The top 3 reasons for a foreign company to register a trademark in the United States are that a registration:

Provides deterrence against infringement.

Registering your trademark with the U.S. Patent and Trademark Office (USPTO) not only gives you priority rights but also potentially prevents others from filing similar marks.

If another business is in the process of clearing a potential trademark and sees your registration, they will likely move forward with another option as they do not want to deal with the potential conflict.

Allows for effective policing of online marketplaces.

A U.S. trademark registration means that you enjoy the legal presumption of validity and ownership of the trademark, as well as the exclusive rights to use the mark in commerce.

It is important to note that the scope of trademark rights is based on the goods and services listed in the registration. Two companies, such as Dove Soap and Dove Chocolates, can own similar trademarks in different industries.

If you find infringement on any online marketplaces, a U.S. trademark registration will help you prove that you are the rightful owner of the mark and allow for easy removal of the infringing materials.

Grants access to the Amazon Brand Registry.

One lucrative path for foreign businesses is selling products through platforms like Amazon, which moves over 12 million items annually. However, counterfeiting is a significant risk.

By registering your trademark, you qualify for Amazon Brand Registry, which offers protection against counterfeit products and control over product listings using your brand.

Tips for filing U.S. trademark applications as a foreign entity

Obtaining a trademark registration in the United States might appear simple. But it is actually a complex legal process. Here are 4 of our top tips to make the trademark application process go as smoothly as possible:

Use the trademark registration from your country as the U.S. filing basis.

If you already own a trademark registration in your home country, you can apply to register your trademark in the U.S. and not have to prove actual “commercial use” in the U.S. for up to five years. This effectively allows you to reserve the name in the United States while you begin to offer your product or service in the country. 

Limit the scope of goods and services within the trademark application.

Many foreign trademark offices allow applicants to file applications to protect an extensive list of goods and services. Because of this, foreign entities often attempt to replicate these overly broad applications when filing in the United States. However, due to a January 2025 USPTO fee change, overly broad trademark applications became much more expensive.

Under the new fee structure, trademark applicants will be charged $200 to use a free-form text block instead of the predefined goods and services from the USPTO’s Identification Manual. If the free-form text exceeds 1,000 characters, the applicant will be charged an additional $200 fee per 1,000 characters. These charges add up quickly and can cost applicants thousands of dollars. You can find an example of the additional cost of broad applications under the new fee structure in our blog, USPTO Fee Changes in 2025: What Foreign Companies Need to Know.

When filing a U.S. trademark application, be sure to focus only on the goods and services that are relevant to your actual or intended use.

Carefully consider the individual or entity that should own the trademark.

Incorrect ownership listings can void your trademark application. For example, in the United States, if a CEO files under their name instead of the company’s, correcting this error is not allowed, and the application will be deemed invalid. Be sure to identify the correct entity, whether it’s a corporation, LLC, or individual, to avoid complications down the road.

All foreign trademark applicants must hire U.S. attorneys.

In August 2019 the USPTO implemented a new rule that requires foreign trademark applicants to be represented by a U.S. attorney.

The one exception to this rule is trademark filings made through the Madrid Protocol. However, if a Madrid Protocol trademark application has any issues, the applicant will still need to hire U.S. counsel for assistance.

Should a foreign company file a U.S. trademark application using use the Madrid Protocol?

The Madrid Protocol is an international trademark treaty that allows applicants to register their trademarks in over 120 countries with one application.

While the Madrid Protocol is designed to simplify the filing process, it often leads to additional time and costs for foreign applicants attempting to register trademarks in the United States.  

U.S. law requires precise descriptions of goods and services, which can result in rejections for applications filed through the Madrid Protocol due to overly broad language or conflicting trademarks.

Under the new USPTO rule, responding to such refusals will require you to hire a U.S. attorney and could add thousands of dollars in legal fees to your registration.

Directly filing your trademarks with the assistance of an experienced U.S. trademark attorney can help avoid these issues upfront and is often the more affordable option.

Here is a quick comparison of the two filing options:

Final thoughts

If your business is expanding into the U.S., filing a trademark is essential for protecting your brand in one of the world’s largest consumer markets. Whether you choose to file directly with the USPTO or through the Madrid Protocol, engaging a U.S. attorney will ensure that your application is handled efficiently and in compliance with U.S. law.

For foreign companies looking to secure their brand in the United States, time is of the essence. Contact Gerben IP today to learn more about your options and how we can help you navigate the U.S. trademark registration process.

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Josh Gerben, Esq.

Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 10,000 trademarks and handled over 1,500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.