Gerben Law Firm works extensively with international clients and their foreign counsel to assist with the filing of trademark applications in the United States (we serve as a local counsel in the United States in this capacity). Clients (and their attorneys) from over 30 countries have used Gerben Law Firm’s local counsel trademark services to apply for a trademark in the United States. One of the top questions we receive from foreign counsel is:

“What does my client need to provide to get the process started?”

As a part of our trademark service we like to get to know clients, their business models, and their unique circumstances.  With that said, there are a few basic items that can help speed the process up. Below is a short checklist of common items that our attorneys need in order to effectively file a trademark application on behalf of a client located outside the United States.

Client Information

  • If filing under a corporate entity, we will need the full corporate name of the applicant, the business type and a copy of the business formation document of the corporate entity.
  • If filing under the name of an individual (not a corporate entity) then we will need the individuals full name and country of citizenship.
  • The corporate address of the applicant (all official correspondence will be handled by our office, but an address is necessary for the USPTO).
  • The full name and title of the officer of the company authorized to sign on behalf of the company (with actual knowledge of the use or intended use of the trademark in the United States).

Trademark Information

  • The full word, phrase, design or other source-identifier that the applicant wishes to file with the USPTO.
  • A list of the client’s goods and services and/or a brief overview of what the client will offer in the United States. A website or other brochures or informational matter will help us understand the client better and gives personalized advice.
  • Any foreign trademark applications/registrations from the client’s country of origin for the same trademark.
  • If already in use/for sale in the U.S., photographs of the product and/or a website where the services are being advertised.

Each client is unique, and we may have additional questions and clarifications. The above, however, should be a good start towards getting our firm started in preparing the US trademark application for a foreign client.

We look forward to working with you and your clients in the future and if you ever have any questions, please contact us using our online form or call our office today.