Your registration ends at the border, but your brand shouldn’t.
Trademark and copyright counsel for international brands entering the U.S. market, as well as for foreign law firms advising them.
If This Sounds Familiar…
You hold trademark registrations in countries like Great Britain, Nigeria, India, Korea, France, and Australia, and now you’re dealing with a U.S. retailer, marketplace, or distributor. You may have assumed that your home registration would be valid in the U.S., but that is not the case. Trademark rights are territorial, meaning the United States only protects trademarks that have been filed for or used within its borders.
You submitted a Madrid Protocol extension to the United States and received a provisional refusal from the United States Patent and Trademark Office (USPTO). The refusal letter is lengthy, the deadline is fixed, and your home counsel cannot sign the response.
You are a trademark attorney outside the United States representing a client who needs a U.S. filing, a U.S. legal opinion, or a response to the USPTO by a specific deadline. You need an associate who can acknowledge the instruction, docket the deadline, and report in your firm's specific format.
The USPTO mandates that every applicant, registrant, and party located outside the United States must work with an attorney licensed to practice in the U.S. If your business is based abroad, engaging U.S. counsel is not optional. The only question is which attorney to choose.
What I Handle
For Brands Entering the US Market:
Clearance: Ensuring your brand is cleared for the U.S. market before launch, the first shipment, or marketplace listing.
Filing Strategy: Developing a filing strategy. This includes:
A direct U.S. application based on use or intent to use
An application based on your home registration or a home application that was filed within the last six months
A Madrid Protocol extension
Office Actions: Responding to office actions and provisional refusals, including adjusting goods and services identifications to comply with the U.S. identification manual.
Maintenance: Handling maintenance declarations and renewals, while ensuring the U.S. use requirement is verified before submitting.
Copyright Registration: Registering copyrights in the U.S. for prints, patterns, photography, packaging artwork, and lookbooks so that enforcement on U.S. platforms can be stronger.
Enforcement: Managing enforcement actions, which may include:
Demand letters
Proceedings at the Trademark Trial and Appeal Board (the USPTO’s administrative court)
Domain disputes under the Uniform Domain-Name Dispute-Resolution Policy
Platform takedowns
U.S. Customs recordation
Agreements: Drafting U.S. distribution, licensing, collaboration, and creator agreements as your brand establishes its American presence.
For Foreign Counsel and IP Firms
I accept associate instructions from law firms and IP practices outside the United States. My services include:
Responses to office actions and provisional refusals
New applications
Maintenance and renewal filings
Opposition and cancellation proceedings
Domain disputes
Written U.S. opinions
I acknowledge every instruction within one business day, docket the deadline upon receipt, and report in your preferred format, if applicable.
How It Works
Intake: Brands should complete the international intake form, including your home registrations, the goods you sell, the visibility of your mark to U.S. customers, and your timeline for entering the U.S. market. Firms should submit instructions using the same form, noting any deadlines or requesting the associate fee schedule.
Analysis: The right route depends on your timeline, budget, the structure of your home portfolio, and when you plan to begin U.S. sales. I will provide a written analysis before any filings, outlining the U.S. use requirements that the registration will need to fulfill later.
Engagement Letter and Invoice: Fees will be charged in U.S. dollars. Work will begin once the engagement letter and invoice are complete.
Filing or Response: I will prepare the application or response, verify the identification of goods and any specimens with you before filing, and then send you the USPTO confirmation.
Reporting: You will receive status updates through our client portal. We can schedule video calls across different time zones as needed, and no travel is required.
Fees
New U.S. Applications: The Trademark Search & Registration package is available for a flat fee of $3,000 for up to two classes. This package includes a comprehensive U.S. search, a written opinion, and the application submission. If the search indicates that the name will not clear in the United States, I will provide the opinion, retain $1,800 for the search and opinion services, and refund the $1,200 portion allocated for filing.
Provisional Refusals and Office Actions: A consultation to review the specific refusal is available for $250. During this consultation, I will explain what the refusal states, the associated deadline, and whether it is advisable to respond. During the consultation, I will quote the fee for filing the response.
Maintenance, Enforcement, and Agreements: Fees for these services will be quoted after review and after you provide instructions.
Associate Instructions: A flat-fee schedule for associates in U.S. dollars is available upon request for law firms and IP practices. Please provide a firm email address, and I will send it. Volume discounts apply after 10 instructions in a year, and a surcharge applies to rush instructions, as detailed in the schedule.
What This Doesn’t Cover
Patents: I refer patent matters to specialized patent counsel.
Entity Formation, Immigration, and U.S. Business Tax: Filing a trademark does not require a U.S. entity, and I do not provide entity formation services. If you need to establish a U.S. company or obtain a visa, those are separate engagements that will require a referral to other counsel.
Filings Outside the United States for U.S. Brands: Extending a U.S. application abroad through the Madrid Protocol is a separate engagement. Intake [link]
Do-It-Yourself Filing: The USPTO does not accept filings from foreign-domiciled applicants without U.S. counsel, so there is no self-guided option. Selvedge [link], my self-guided platform, is designed specifically for U.S. applicants.
Start Here
For Brands: Please complete the international intake form by including your home registrations, the goods you sell, and your timeline for entering the U.S. I will respond within two business days with my recommended path forward, along with either an engagement letter or a link to schedule a consultation if more analysis is needed.
For Firms: Please send your instructions through the same intake form, noting any deadlines, or request the associate fee schedule. I will acknowledge your submission within one business day.
FAQs
Yes, you can file an application based on your home registration or a Madrid extension, which can be registered in the U.S. without proof of use. However, to maintain the registration, you must submit sworn declarations of U.S. use starting in the sixth year. Therefore, it’s important to have a plan for U.S. sales from the beginning.
Can we file in the United States before we start selling there?
1
Why was our Madrid extension refused while the same goods were accepted in our home country?
2
U.S. practices require more specific identification of goods and services than most home registers typically accept. You may receive a provisional refusal on this basis, but it is usually possible to address the issue. The deadline for responding runs from the date the USPTO issued the refusal, not from when WIPO forwarded it, so it’s best to send your response as soon as you receive it.
We already have a U.S. attorney of record from a filing service. Can you take over?
3
Yes, I can take over by filing a change of attorney with the USPTO and reviewing the record for any vulnerabilities left by the prior filings. This includes checking the owner named on the application and the goods/services listed.
How do we manage communication across time zones?
4
I provide written updates through the client portal. I schedule video calls at times that work for both sides.
Do we need a U.S. address or U.S. entity?
5
No, you do not need a U.S. address or entity. You only need a U.S.-licensed attorney of record. Your foreign entity can own the U.S. application.
What currency and payment methods do you accept?
6
I accept payments in U.S. dollars via credit card.
Do you handle U.S. Customs recordation for imported goods?
7
Yes, I can record a U.S. registration with Customs and Border Protection, which allows the agency to stop counterfeit shipments at the port. U.S. Customs Recordation and Border Enforcement [link]