3 Considerations for Non-U.S. Businesses Looking to Register Trademarks in the U.S.

There are many benefits to securing your intellectual property in the U.S. The main reason for doing so is gaining access to the world’s largest economy. Fortunately to potential filers, you do not need to be an American citizen to apply for IP protection inside the U.S. As globalization continues to permeate every aspect of the global economy, there have been actions taken to make filing in the U.S. from a foreign country easier, but it can still get quite complicated. If you are in this situation, we have provided a general guide that lays out some considerations you need to address. 

1. As the law stands, you need a U.S. law firm to register your trademark directly with the U.S. Patent and Trade Office (USPTO). This law was passed in mid-2019. It stipulates that all “foreign-domiciled” persons must use a U.S.-licensed attorney when applying for a trademark. Teaming up with a U.S.-licensed attorney is the most effective way to ensure your application will mature into a registered trademark, but there are never any guarantees. 

2. You may use the Madrid Protocol. For entrepreneurs and inventors who want to file for intellectual property protection in multiple countries, using the Madrid Protocol could be worthwhile. With this procedure, you will start by filing a trademark application in your applicable jurisdiction. For example, say you are currently domiciled in Australia; you will register with IP Australia and notify the agency that you are seeking registration internationally. From there, your government should forward the relevant information to the World Intellectual Property Organization (WIPO), which will request protection extension to member-states of the Madrid Protocol. 

3. The main question to answer is whether or not you are actually going to sell your goods or services to American consumers. The USPTO will closely scrutinize whether or not you intend to add value to the economy of the United States by engaging in commercial transactions. If you apply for a U.S. trademark and you cannot show that you are engaged in U.S. commerce, then you must wait another year to show that you satisfy this requirement.

It is vitally important to be proactive and anticipate the jurisdictions in which you want to apply for a trademark. There are many benefits to participating in the U.S. economy, but it requires an experienced intellectual property lawyer to ensure your application has the best chance of being successful. Our firm would be honored to provide legal solutions for your intellectual property; we offer a flat-fee structure to provide you with financial certainty. Get in touch with us here to schedule a complimentary 15-minute consultation.

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Hayoon Kane Law Firm

I am committed to helping business owners such as yourself understand the intricacies of the law, so you can concentrate on growing your company.

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