Authored by: Shane T. Moreillon

Since August 3, 2019, the landscape for international trademark practice in the United States fundamentally changed. If you represent clients seeking trademark protection in the U.S. market, understanding the mandatory U.S. counsel requirement is essential for maintaining seamless service to your international clients.

The Core Requirement: No U.S. Domicile = U.S. Counsel Required

The rule is straightforward: any trademark applicant, registrant, or party to a proceeding who is not domiciled in the United States must appoint a U.S.-licensed attorney in good standing to handle their USPTO matters. This isn’t merely a recommendation—it’s a hard requirement that affects your clients’ ability to proceed with their U.S. trademark applications and registrations.

Understanding “Domicile” in the U.S. Context

For your clients’ planning purposes, it’s crucial to understand how the USPTO defines domicile under 37 C.F.R. § 11.14:

For Individuals: Domicile means the place where a person resides with the intent to remain indefinitely. This goes beyond temporary residence or business presence—it requires genuine intent to make the U.S. a permanent home.

For Entities: Corporate domicile is determined by the location of the company’s principal place of business where senior executives and officers control the company’s activities. This typically means where key management decisions are made, not necessarily where the company is incorporated or where it has subsidiaries.

Most international clients will not meet these domicile requirements, making U.S. counsel appointment mandatory.

Scope of the Requirement: What’s Affected

The regulation, codified at 37 C.F.R. §§ 2.11, creates a comprehensive barrier for non-domiciled parties. Without appointed U.S. counsel, your clients cannot file:

TEAS Plus application forms (the cost-effective filing option)
Any application-related submissions (responses to office actions, amendments, etc.)
Registration-related filings (renewals, maintenance documents)
Paper submissions (if electronic filing isn’t possible)
ESTTA submissions (opposition and cancellation proceedings)
Essentially, any meaningful interaction with the USPTO becomes impossible without U.S. counsel.

The Madrid Protocol Exception—And Its Limits

There is one important exception that may affect your international clients: applications filed under the Madrid Protocol pursuant to Trademark Act Section 66(a) can still be transferred from WIPO’s International Bureau to the USPTO without immediate U.S. counsel appointment.

However, this exception has a critical limitation. The moment the USPTO issues any correspondence—whether an office action, examination report, or procedural notice—your client must have appointed U.S. counsel to respond. This means the Madrid route provides only temporary relief, not a complete workaround.

Practical Implications for Your Practice

This requirement creates several practical considerations for international practitioners:

Client Communication: Your clients need to understand this requirement early in the trademark planning process. Discovering the need for U.S. counsel after filing can create delays and complications.

Budget Planning: The cost of U.S. counsel should be factored into initial trademark budget discussions with clients seeking U.S. protection.

Timing Considerations: Appointing U.S. counsel early—ideally before filing—ensures smooth prosecution without procedural delays.

Relationship Management: Building relationships with qualified U.S. trademark counsel becomes essential for serving international clients effectively.

Beyond Compliance: The Strategic Value of U.S. Counsel

While the regulation makes U.S. counsel appointment mandatory, the benefits extend well beyond mere compliance:

Local Expertise: U.S. trademark law contains numerous nuances and strategic considerations that benefit from local knowledge and experience.

Prosecution Efficiency: Experienced U.S. counsel can navigate USPTO procedures more efficiently, potentially saving time and costs.

Strategic Guidance: Understanding U.S. market dynamics, enforcement considerations, and business practices adds value beyond basic legal compliance.

Risk Management: Proper prosecution strategy can avoid common pitfalls that might affect your clients’ trademark rights or business plans.

Building Effective International Partnerships

The most successful international trademark practices have adapted to this requirement by developing strong relationships with U.S. counsel. This allows foreign associates to:

Maintain primary client relationships while ensuring U.S. compliance
Coordinate global trademark strategies effectively
Provide seamless service across multiple jurisdictions
Offer clients comprehensive trademark protection

Conclusion: Turning Compliance into Competitive Advantage

While the U.S. counsel requirement initially appeared to create barriers for international practice, forward-thinking firms have transformed this compliance obligation into a service advantage. By partnering with experienced U.S. trademark counsel, international practitioners can offer their clients more comprehensive and effective trademark protection in the valuable U.S. market.

The key is viewing this requirement not as an obstacle, but as an opportunity to enhance your clients’ trademark strategies through collaborative international practice.

Partner with Experienced U.S. Trademark Counsel

If you’re seeking a reliable U.S. partner to serve your international clients’ trademark needs, Woodard Emhardt offers the experience and collaborative approach that makes international trademark practice successful. We understand the unique challenges of serving international clients and work seamlessly with foreign counsel to provide efficient, effective trademark services.

We’d welcome the opportunity to discuss how we can support your practice and your clients’ U.S. trademark objectives. Please contact us to explore how we can work together.