Ask my AI Legal Analyst about a foreign-owned US filing?
Tap a question below for an instant, free answer (no email needed), or describe your mark, your entities, and your goods or services and the analyst routes you to the right next step. Answers cover owner selection between a foreign parent and a US affiliate, direct vs Madrid filing, intent-to-use, Section 44, USPTO fees, and the Statement of Use.
Common questions, always free
Who should own the US application.
When a foreign company already holds the mark and a US affiliate has just been formed, the single most consequential decision is the applicant name. A US application can be filed by a US company, by the foreign company, or through a Madrid 66(a) designation. But the applicant has to be the entity with a bona fide intent to use the mark in US commerce and control of the mark and its goodwill. Getting this wrong is not a formality.
Same owners do not make two companies interchangeable
Having the same ultimate beneficial owners (the same UBOs) behind both the foreign owner and the US affiliate does not make them interchangeable for trademark ownership. The application has to be filed in the name of the entity that actually owns or controls the mark for US purposes. Filing in the wrong name can render the application void, and that is a defect that is often impossible to fully cure later, so the owner question is settled before filing, not after.
What "bona fide intent to use" means for a new affiliate
A newly formed US affiliate can be the applicant on a Section 1(b) intent-to-use application, but only if it genuinely intends to use the mark in US commerce. Intent is judged on the objective circumstances, so a brand-new entity with no business plan, no products, and no steps toward US use is on weaker ground than one that is actively standing up US operations. This is worth being candid about before filing, because a thin intent-to-use claim can be challenged. Where it matters, I look at what documents and activity support the intent.
Holding the mark abroad is not US protection
A registration in your home country, or an EU registration, does not give you rights in the United States. US trademark rights come from US registration and US use. Your foreign registration can support a US filing under Section 44 or Section 66(a), and it can establish a priority date in some cases, but it does not by itself clear the mark for the US market or stop a US prior user. The US filing is a separate step with its own owner, basis, and class analysis.
Four ways to structure a foreign-owned US filing.
Once the owner question is on the table, there are a handful of clean structures. The right one depends on which entity is the real US commercial user, how stable the foreign registration is, and how much you need to tailor the US identification of goods and services. None of these is automatically best.
Direct US application by the US affiliate
The US operating or holding company files directly, as the owner with bona fide intent to use the mark in US commerce. Clean when the US entity is genuinely the one using and controlling the mark here, and it keeps the US filing independent of the foreign registration.
Assignment or license between the foreign owner and the US affiliate
The foreign owner assigns the US rights to the US affiliate, or licenses the mark to it with quality control. The paperwork has to match who actually owns and controls the goodwill, so the assignment or license is drafted to support, not undercut, the ownership claim on the application.
Madrid designation through the foreign owner
The existing foreign owner extends its international registration into the US under Section 66(a). Efficient if the foreign owner is also the real US owner and the identification works as-is. Risky if the US affiliate is the actual commercial user, because that creates an ownership mismatch.
Parallel filings
A combination, for example a direct US filing by the US affiliate plus coordination with the foreign portfolio. Sometimes the cleanest answer when ownership and control are split across entities, or when timing and priority need to be managed deliberately.
Holding-company services (Classes 35 / 36): test whether you need them
Foreign groups often want to claim holding-company, business-management, or financial services for the US filing. Those can fall in Class 35 and Class 36, but each added class is another per-class USPTO fee plus another $750 attorney fee, and custom or free-form wording for those services triggers the $200 per-class USPTO surcharge. If the real commercial activity is in a core class, filing extra holding-company classes you do not actually need adds cost without adding protection. I test that before padding the application.
Direct US filing vs Madrid Protocol.
If you already hold a foreign registration, you can extend it to the US through the Madrid Protocol (a Section 66(a) US designation) instead of filing a fresh US application. Madrid can be efficient, but it is not automatically the better choice for a foreign company with a new US affiliate. The right answer depends on which entity is the real US commercial owner and how much the US identification needs tailoring.
| Issue | Direct USPTO filing | Madrid 66(a) US designation |
|---|---|---|
| Applicant / entity control | You choose the exact US owner. A US operating or holding company can be the applicant if it has bona fide intent and control of the mark. | The US designation flows from the existing international registration holder. If the US commercial owner is a different affiliate, this can create an ownership mismatch. |
| Goods/services flexibility | Full flexibility to draft a US-tailored identification, including breaking out or narrowing classes for the US market. | The US identification generally tracks the international registration and cannot exceed it. Less room to tailor wording for US examiner practice. |
| USPTO fee structure | $350 per class base, plus $200 per class for free-form identification and $100 per class for insufficient information, where applicable. Current, subject to USPTO change. | $600 per class for the US designation. Current, subject to USPTO change. |
| Amending the US identification | Straightforward to amend or narrow the US application during prosecution to satisfy the examiner. | Harder. Amendments are constrained by the international registration, which can make office-action responses more awkward. |
| Dependency on the foreign basic registration | Independent. A US direct application stands on its own once filed. | Dependent for five years (central attack). If the foreign basic registration is cancelled within that window, the US designation can fall with it, though transformation may be available. |
| Best use case | The US affiliate is the real US owner, or the US identification needs tailoring, or you want independence from the foreign mark. | The foreign owner is also the US owner, the existing identification works, and you are extending into several countries at once. |
| Key risk | Pay the per-class fee at filing for every class included; broad filings cost more upfront. | Ownership mismatch if the US affiliate differs from the foreign holder; five-year dependency; limited US tailoring. |
The five-year dependency is the catch foreign owners miss
A Section 66(a) designation is genuinely efficient when the foreign owner is the US owner and the identification works as-is. But for the first five years it rides on the foreign basic registration. If that basic registration is cancelled or successfully attacked in that window, the US designation can fall with it (central attack), and you are then relying on transformation into a national application to rescue the rights. If the foreign registration is solid and the foreign owner is also the US owner, that risk is small. If either is shaky, a direct US filing is often cleaner. I look at the actual entity structure and the stability of the basic mark before recommending a route.
Fixed fees by stage, not one 18-month bundle.
USPTO prosecution runs many months, and future events (office actions, publication, opposition, notice of allowance, Statement of Use) depend on USPTO timing and third parties. So I quote attorney fees by milestone, and the USPTO government fees are paid upfront at cost as a pass-through. You pay for the next stage when it actually happens, not for events that may never occur. The same per-class pricing applies whether the applicant is a foreign company or a US affiliate.
- Attorney search of live and dead USPTO records
- Likelihood-of-confusion read on close marks
- Adjacent-class and common-law flags
- Go / adjust / reconsider recommendation
- Owner and entity / ownership setup (parent vs US affiliate)
- Application drafting and filing-basis selection
- Goods/services description tuning
- Specimen review (for 1(a) filings)
- e-filing through Trademark Center
- Non-substantive office action responses
- Registration certificate handling and renewal calendar setup
- Review of the office action and cited references
- DuPont factor analysis
- Argument distinguishing the cited mark
- Goods/services amendments if useful
- Evidence assembly (third-party use, dictionary, market data)
- e-filed response
- Specimen review
- SOU drafting and filing
- Specimen-refusal response (if the examiner rejects the specimen)
- Registration certificate
- Review of the basic mark and existing identification
- Owner / control analysis for the US designation
- Direct-vs-Madrid recommendation for your facts
- Extension request drafting and filing
- Deadline tracking
- Quoted when the need arises
USPTO government fees are separate from my attorney fee, paid upfront at cost, and current as of January 2025 but subject to USPTO change. Base application is $350 per class. Add $200 per class if the application uses free-form or custom identification of goods/services (likely for holding-company style wording), and $100 per class if the application has insufficient information. Madrid Section 66(a) US designation is $600 per class. Statement of Use is $150 per class; a six-month SOU extension is $125 per class.
The intent-to-use (Section 1(b)) timeline for a new US affiliate.
Foreign companies standing up a US affiliate often are not using the mark in US commerce yet. Section 1(b) lets the US affiliate file before use begins, claiming a priority date now and proving use later, as long as the affiliate has a bona fide intent to use the mark. Here is the path from strategy to registration. A clean ITU filing can still take many months to allowance, and often 18 to 24 months to registration, depending on when your real-world US use begins.
Owner, basis, and goods/services tuning
I confirm the right owner (foreign parent or US affiliate), the right filing basis (1(a), 1(b), 44, or 66(a)), and the classes that match your real intended US use. I tune the goods/services wording with you before anything is filed.
USPTO filing
After you approve the draft, I e-file through Trademark Center. You get the USPTO serial number the same day. Priority date is set.
Examination and first action
An examiner is assigned and issues either an approval for publication or an office action. Non-substantive office actions are included in the $750. Substantive refusals are quoted separately.
Publication or office action
If approved, the mark publishes in the Official Gazette for a 30-day opposition window. If an office action issued instead, I respond and then proceed.
Notice of Allowance
On a 1(b) application, once it clears publication with no opposition, the USPTO issues a Notice of Allowance. The mark is allowed but not yet registered, because the affiliate has not yet shown use.
Statement of Use
When the US affiliate is actually using the mark in commerce, you file a Statement of Use with a specimen. If use is not ready, you can buy time with six-month extensions of time to file the SOU.
Registration
The USPTO issues the registration certificate. I send it to you and set up the renewal calendar (Section 8 affidavit at years 5 to 6, Section 9 renewal at years 9 to 10).
Section 1(a) and Section 44 are shorter, and 44 needs no US use at filing
If the applicant is already using the mark in US commerce, a Section 1(a) use-based application skips the Notice of Allowance and Statement of Use steps, and total time to registration on a clean 1(a) filing is typically around 10 to 14 months. A Section 44 filing based on a foreign registration also does not require proof of US use at filing, which is often useful for a foreign owner. The ITU path above is longer because it waits for the US affiliate's real-world use.
Clearance is still worth considering, even if the mark is registered abroad.
Some foreign owners arrive having registered the mark in their home country, or having run a quick USPTO search, and say no US clearance is needed. That can be a reasonable position if you knowingly accept the risk. It is worth understanding the tradeoff before you decide, because a foreign registration does not clear the US market.
An attorney clearance opinion is different from a raw USPTO export
A raw database search shows hits, but it does not run the analysis. A clearance opinion looks at what a raw export leaves unresolved: dead exact marks that may still reveal a prior user or marketplace history, similar marks in adjacent classes, and common-law uses that never appear in the register at all. The likelihood-of-confusion question is a legal analysis, not a database listing, and US common-law rights are not something your foreign registration accounted for.
Filing without clearance may be perfectly acceptable if you knowingly assume the risk. The tradeoff is that the USPTO does not pre-clear your mark: you learn about prior-user problems through the office-action process, after you have already paid the filing fee, picked a US launch date, and started building marketing. The decision is yours; I will tell you plainly what each path risks.
Dead exact marks are usually less blocking, but not irrelevant
If a US search turns up dead exact marks, that is generally better news than a live registration, because a cancelled or abandoned registration is not itself a current bar to your application. It is not the end of the inquiry, though. A dead exact mark can still reveal a prior user who may retain common-law rights, or marketplace history the examiner notices. The right move is to check why the mark went dead and whether anyone is still using it, rather than assuming a dead result means the path is clear.
A typical foreign-affiliate filing puzzle.
EU-registered rental mark, new US affiliate
Composite example: a foreign group owns an EU registration for a construction-equipment rental mark and wants to file in the US through a newly formed US affiliate. The core activity sits in Class 37 (rental of construction equipment), with Classes 35 and 36 raised because of holding-company services, and the Madrid Protocol mentioned as an alternative route. The numbers, names, and details here are illustrative only.
The first questions are not only availability. They are:
- Who should own the US application, the EU parent or the new US affiliate?
- Does the US affiliate actually have a bona fide intent to use the mark in US commerce, and what supports that intent?
- Are the Class 35 and 36 holding-company descriptions truly needed, or do they just add per-class fees and examiner scrutiny?
- Would a Madrid 66(a) designation through the EU owner create an ownership mismatch with the US affiliate that is really the commercial user?
- Is the EU basic registration stable enough that a five-year Madrid dependency is an acceptable risk, or is a direct US filing cleaner?
None of these are answered by a search export. They are answered by sorting out ownership, intent, class scope, and filing route before anything goes to the USPTO. That is the work that keeps the application from being filed in the wrong name or padded with classes that do not earn their fee.
How a filing works.
Intake and ownership
You send me the mark, the goods or services, any specimen, your entity information for both the foreign owner and the US affiliate, and any foreign registration. I settle who owns the US application with you.
Tap for the detail ↻What I confirm first
The correct owner, the right filing basis (1(a), 1(b), 44, or 66(a)), and the classes that match real intended use. This is where ownership mismatches and unnecessary classes get caught.
Tap to flip back ↻Draft and approve
I draft the application and the goods/services identification and send it to you for review. You approve before anything is filed.
Tap for the detail ↻Why the wording matters
The identification controls scope, examiner risk, and which USPTO surcharges apply. Free-form wording adds $200 per class, so I tune it deliberately rather than padding it.
Tap to flip back ↻File and prosecute
I e-file through Trademark Center and you get the serial number the same day. I handle non-substantive office actions through to publication.
Tap for the detail ↻If a refusal issues
Non-substantive office actions are included. A substantive 2(d) or 2(e) refusal is quoted separately from $850, and only if the USPTO actually issues one. No registration is guaranteed; the examiner has discretion.
Tap to flip back ↻Registration or SOU
A use-based mark proceeds to registration. An intent-to-use mark gets a Notice of Allowance, then registers after the Statement of Use when use begins.
Tap for the detail ↻After registration
I send the certificate and set up the renewal calendar (Section 8 at years 5 to 6, Section 9 at years 9 to 10) so the maintenance deadlines do not lapse.
Tap to flip back ↻When this package is not a fit.
Honest about scope
- You have not done any clearance work and want certainty. Clearance is recommended, not mandatory. If you want the risk read before filing, get a clearance opinion first; if you knowingly accept the risk, I can file without it.
- You need a TTAB opposition or cancellation handled. Inter-partes TTAB practice is litigation. That is a separate engagement; email me with the TTAB case number.
- You need full foreign national filings. US-anchored Madrid filings and Section 44 foreign-priority filings can be scoped here. National foreign filings outside the US require associate counsel in each jurisdiction; I coordinate where useful but cannot file directly abroad.
- You need the underlying corporate work to form the US affiliate. I can point you to formation, but the trademark filing assumes the US entity already exists or is being formed. The owner question still has to be settled before filing.
- You want a guarantee of registration. No attorney can guarantee registration. The USPTO examiner has discretion under Section 2 of the Lanham Act, and third parties can oppose. What I do is file the application correctly, on time, and prosecute it with reasonable diligence.
Frequently asked questions.
Can a new US affiliate own the US application if the foreign parent owns the existing mark?
It can, but only if the US affiliate is genuinely the entity with a bona fide intent to use the mark in US commerce and control over the mark and its goodwill. Shared owners (the same UBOs) do not make two companies interchangeable for trademark ownership. The application must be filed in the name of the correct owner.
The usual options are a direct US application by the US company, an assignment or license between the foreign owner and the US affiliate, a Madrid Protocol designation through the existing foreign owner, or parallel filings. Filing in the wrong name can void the application, so this is decided up front.
Should a foreign company file directly with the USPTO or through Madrid?
It depends on which entity is the real US commercial owner and how much you need to tailor the US goods/services identification. A direct US application gives full control over the applicant entity and the US identification, and is not tied to your foreign basic registration. A Madrid Section 66(a) designation can be efficient when the foreign owner is also the US owner and the existing identification works, but it depends on the foreign basic mark for five years and is harder to amend for US examiner requirements.
Madrid is not automatically better. If the US affiliate is a different entity or the US wording needs work, a direct filing is often cleaner. This depends on your specific facts.
What is the five-year dependency or central attack on a Madrid designation?
A Madrid Section 66(a) US designation depends on the foreign basic registration for five years from the international registration date. If the basic registration is cancelled, surrendered, or successfully attacked within that window, the US designation can fall with it. This is called central attack.
Transformation into a national US application may be available to rescue the rights, but it adds cost and complexity. A direct US application does not carry this dependency, because once filed it stands on its own. Whether the dependency matters for you depends on how stable the foreign basic registration is.
What is the difference between Section 1(a), 1(b), 44, and 66(a) for a foreign owner?
Section 1(a) is use-based: you are already using the mark in US commerce and file a specimen. Section 1(b) is intent-to-use: you have a bona fide intent to use but are not using yet, so you file a Statement of Use later when use begins. Section 44 lets a foreign applicant rely on a foreign application (44(d) priority) or registration (44(e)) without proving US use at filing. Section 66(a) is a US designation of an international registration under the Madrid Protocol.
Many foreign-owned filings use 1(b), 44, or 66(a). The right basis depends on the owner, the timing of US use, and the foreign registration.
Does holding the mark in a home country protect it in the US?
No. US trademark rights come from US registration and US use, not from a foreign registration. Your foreign registration can support a US filing under Section 44 or Section 66(a), and it can establish a priority date in some cases, but it does not by itself give you US rights, clear the US market, or stop a US prior user.
The US filing is a separate step with its own owner, basis, and class analysis. This is one of the most common misconceptions foreign owners arrive with.
Can a foreign owner file before US use begins?
Yes. A Section 1(b) intent-to-use application lets a US affiliate file before it is using the mark, as long as it has a bona fide intent to use it in US commerce. You claim a priority date now and prove use later with a Statement of Use, after the USPTO issues a Notice of Allowance. A Section 44 filing based on a foreign registration also does not require proof of US use at filing.
A clean ITU filing can still take many months to allowance, and often 18 to 24 months to registration depending on when use starts.
Are the USPTO government fees included in the attorney fee?
No. The attorney fee and the USPTO government fee are separate, and the USPTO fees are paid upfront, at cost, as a pass-through. As of January 2025 the base application is $350 per class, with a $200 per-class surcharge for free-form or custom identification wording and a $100 per-class surcharge for an application with insufficient information.
A Madrid Section 66(a) US designation is $600 per class, a Statement of Use is $150 per class, and a six-month SOU extension is $125 per class. These are current government fees and are subject to USPTO change.
How long does a foreign-owned US filing take?
It depends on the filing basis and on USPTO timing, which I do not control. A use-based Section 1(a) filing typically reaches registration in roughly 10 to 14 months when it is clean. An intent-to-use Section 1(b) filing can still take roughly 18 to 24 months to registration, because after the Notice of Allowance you wait until the affiliate's real-world US use begins to file the Statement of Use.
Section 44 and Section 66(a) filings track the examination timeline but do not require proof of US use at filing. Office actions and oppositions can extend any of these, so no firm date can be promised.
Do holding-company services belong in Class 35 or 36?
Sometimes, but it is worth testing whether you actually need them. Holding-company and business-management style services can fall in Class 35, and certain financial or capital services in Class 36, but adding classes adds USPTO fees per class and can invite extra examiner scrutiny, and custom or free-form wording for these services triggers the $200 per-class USPTO surcharge.
If the real commercial activity is in the core class, filing extra holding-company classes that you do not need adds cost without adding protection.
Do I need a clearance opinion before filing in the US?
It is recommended, not mandatory, and a foreign registration does not substitute for it. The USPTO will not pre-clear your mark; you find out about prior-user problems through the office-action process after you have paid the filing fee, picked a US launch date, and started building marketing. A clearance opinion is different from a raw USPTO export, because it runs the likelihood-of-confusion analysis on the results, including US common-law uses that never appear in the register.
If you knowingly accept the risk, I can file without clearance. See the clearance opinion page.