US Trademark Attorney for Foreign Applicants — Paid Consultation on 37 CFR 2.11(a)
A paid consultation with Sherrod Seward, Esq. for applicants, registrants and Board parties whose domicile is outside the United States.
Since 3 August 2019 the rule has been easy to state and easy to get wrong. An applicant, registrant or party to a proceeding whose domicile is not located within the United States or its territories must be represented by a US-licensed attorney before the USPTO, and the Office itself cannot help with choosing one. It turns on domicile — the permanent legal residence of a person, or the principal place of business of a company — not on nationality, not on where the mark is used, and not on a mailing address. You will leave the call knowing whether the rule reaches you, which entity should actually be the applicant, what the paper in front of you requires, and by when.
Prefer to speak to someone first? +1 (202) 999-3631
Request the consultation
Six fields. About a minute.
Bring the call one of these
- An office action requires a US-licensed attorney to be appointed before anything proceeds.
- The USPTO has queried your domicile address and asked for evidence of it.
- You have a US subsidiary or distributor and do not know which entity should own the mark.
- A registration granted years ago is coming up to its next maintenance filing.
- A Trademark Trial and Appeal Board matter has been suspended until counsel is appointed.
A domestic representative is not a representative
This is the confusion that costs people the most, and it is worth being exact about. A party not domiciled in the United States may designate a domestic representative — a person residing here on whom notices or process in proceedings affecting the mark may be served. That designation is optional, it does one job, and the rule creating it says in terms that the mere designation of a domestic representative does not authorise the person designated to represent the applicant or registrant. Appointing a US-licensed attorney under the representation requirement is a different act, on a different rule, doing a different job. A client who has done the first has not done the second, and learning that from an office action costs time that a response period may not have to spare.
How it runs
- Send the enquiryThe form below. Six fields, about a minute.
- Pay the consultation fee$500, on the firm's secure payment page. Credited in full against the fee for the engagement if this office is engaged on the matter.
- The consultationThe call itself. Bring the serial or registration number, anything the USPTO has sent, and the date printed on it — the live record and the paper govern, not a recollection.
- A written summaryWhat was decided, what the next step is, and the date it has to happen by.
Questions people actually ask
What do I actually get for the fee?
The $500 is the fee for the consultation itself and for the written summary that follows it. It is not a retainer, and it does not include drafting or filing a FOIA request, an administrative appeal, a licence application, a delisting petition, a federal court complaint, a trademark application, a response to a USPTO office action, or a post-registration maintenance filing - each of those is separately scoped and separately quoted. Government, agency and court filing fees, any agency search, review or duplication fees, and any USPTO filing fees, are not included and are payable to the government, not to this office. On a government contract matter it likewise does not include preparing or certifying a claim to a contracting officer, a request for equitable adjustment, a termination settlement proposal, an agency-level protest, a protest at the Government Accountability Office, an appeal to an agency board of contract appeals, or a complaint in the United States Court of Federal Claims - each of those is separately scoped and separately quoted.
Is this legal advice?
The consultation is. This page is not — it is general information about federal practice, and reading it creates no relationship with this office. Sending this form does not create an attorney-client relationship. No attorney-client relationship is formed until this office and you have signed a written engagement agreement.
Can you tell me what my chances are?
You will get a candid assessment of what your record supports and where it is thin, which is the useful version of that question. What you will not get is a percentage. Every matter is decided on its own record by a government officer or a judge, and prior results do not guarantee a similar outcome.
What happens if you cannot help?
You will be told so on the call, and told where the matter actually belongs. That happens often enough to be worth saying out loud.
We have a US address. Does that make us US-domiciled?
Almost certainly not. Domicile means the permanent legal place of residence of a natural person, or the principal place of business of a company — for a company, the headquarters where its senior executives or officers ordinarily direct and control its activities. A post office box, a care-of address, a forwarding service or a US agent's address is not a domicile, and putting one in the domicile field tends to produce a request for the real one rather than to answer the question. A US subsidiary does not move the domicile of a foreign parent that is itself the named applicant, and which group entity should own the US registration is a decision worth taking deliberately rather than by accident of who signed.
Our registration predates 2019. Does the rule reach us?
It reaches registrants and parties to proceedings, not only new applicants, and that is the part most often missed. The periodic declarations and renewals that keep a US registration alive are filed by a registrant, so a foreign-domiciled owner meets the requirement at the next maintenance deadline whatever route the registration originally came by. It is entirely predictable, which means it can be planned rather than discovered.
Our mark reached the United States through the Madrid Protocol. Do we need US counsel?
This is where the timing bites hardest. A request for extension of protection reaches the USPTO through the International Bureau rather than through a US filing, so holders and their local counsel often have no US attorney at all. The USPTO's guidance is that representation by a US-licensed attorney is required beginning at the time of any provisional or other refusal. A provisional refusal carries a response period, so the requirement and the clock arrive in the same envelope, and every day spent looking for counsel comes out of the response.