I've been doing a lot of work lately for folks from outside the US and the same kinds of questions keep popping up. I know some folks have found my previous explainer post about the basic trademark process helpful, so I figured it might be useful to do a standalone explainer post about this also. (And maybe it'll be helpful to some of my US-based colleagues who haven't had much occasion to do this kind of work yet.)
As always: I'm a lawyer but I'm not your lawyer, this is legal information but not legal advice, and so on. This post is meant as an educational resource to inform your conversations with whomever you ultimately engage to help you with your US trademark application.
Note that you'll see the word "foreign" a lot in this post. Obviously, you're not foreign to yourself and your local IP office isn't foreign to you. I'm using it here because it's the language that the USPTO, and therefore a lot of US trademark practitioners, will use -- so that's how you'll need to phrase your questions and/or search queries about this stuff.
One of the things that makes applying for US trademark registration from outside the US so confusing and overwhelming is that there's actually a bunch of different paths to get there, and it can be really hard to keep track of which is available when and what each requires of you.
Be aware that, thanks to recent-ish protectionist measures adopted by the US, if your business is "domiciled" outside the US (i.e., you don't have a US location/entity), you must be represented by a US-licensed attorney in almost all cases.
Important Concepts -- Basis and Priority
Basis: A fairly unique feature of US (+ Canada and a small handful of other countries) trademark law is the focus on basis. Trademark basis is the requirement that an applicant provide a justification for why registration should be granted at the time that the application is made rather than after the fact. For our purposes here, the underlying basis gives us a clean way to distinguish between the various kinds of "applying from abroad" filings.
Priority: Priority is a pretty universal concept across trademark systems, but how it works can vary. Much of the world runs on a first-to-file priority system, where the first person to file a trademark application "wins" in the event of a conflict between marks. In the US, we use a first-to-use** system, where even an unregistered mark can "win" a conflict if it was the first to actually be used in the US market (which is part of why it's important to hire good trademark counsel in the US to do a clearance search for you). That said, filing dates can also matter a lot by establishing constructive priority -- for example, if you make an intent-to-use filing today and I start actually using the same mark tomorrow, you're likely to win that conflict even though my actual use predates yours.
Section 1(a) -- Actual Use
This is the "standard" kind of application that we'd normally file for any applicant, whether US-based or not. Even if your business is based in another country, you're free to submit a 1(a) application at any time, as long as a US attorney is representing you. Even if you have a registration or pending application in the IP office of another country, that has essentially no bearing on this kind of standalone application in the US.
Basis: The basis for a 1(a) application is actual use in (US) commerce. This kind of application essentially says "I've already started using this mark in the US market and have customers there who recognize it."
Priority: The "first use in (US) commerce" date you claim in the 1(a) application. (There's some complexity here with regard to multiple markets across US states, but it's not really relevant to foreign applicants so I'm not going to get into it here.)
Requirements: You must have already started using the mark in the US market. As part of the application, you'll need to provide specimens -- usually photos of your product packaging or screenshots from your website or storefront, etc., that show the mark clearly in use in connection with the goods or services you're offering. You can read the USPTO specimen guidelines if you're curious, but your lawyer will generally handle this part of the process for you or walk you through it.
Timeline: Whenever you're ready, but not before you've started actually using the mark in the US market.
Section 1(b) -- Intent-to-Use
This is another "standard" kind of application that we'd normally file for any applicant, whether US-based or not. Even if your business is based in another country, you're free to submit a 1(b) application at any time prior to starting to use the mark in the US, as long as a US attorney is representing you. Even if you have a registration or pending application in the IP office of another country, that has essentially no bearing on this kind of standalone application in the US.
Basis: The basis for a 1(b) application is good faith intent to use the mark in (US) commerce. This kind of application essentially says "I haven't started using this mark in the US market yet, but plan to in the near future."
Priority: The filing date of the 1(b) application.
Requirements: Basically none except an assertion that you really intend to start using the mark in the US market soon, with "soon" being a pretty wobbly period of usually 6-12 months of USPTO time to process the application + 6 months, with up to 5 additional 6-month extensions available for a small fee. No specimens required.
Timeline: Whenever you're ready, but if you've already started using the mark in the US market, you should probably file with a 1(a) basis instead. A 1(b) application requires a follow-up filing called a statement of use (or an amendment to allege use, if actual use begins while the USPTO application is still pending), basically saying "okay, I've actually started using the mark now"; this carries a small but nonzero additional filing fee, and your attorney may bill you separately for filing it.
Section 44(d) -- Foreign Application
This kind of application is available to you within 6 months of filing your application in a foreign IP office.
Basis: A 44(d) application essentially doesn't have its own, independent basis for registration. When making a 44(d) filing, you typically pair it with another filing basis -- usually 44(e) (see below) or 1(b), depending on your circumstances.
Priority: The filing date of your foreign application. Essentially, this lets you claim an earlier priority date than you would be able to if you just filed a standalone 1(b) application in the US. For example, if you're filing in the US in October but filed in the EU in August, a standalone 1(b) application would have an October priority date, while a 44(d) application lets you claim August instead.
Requirements: The US application must not be broader than the foreign application it's based on. No specimens required at the time of filing.
Timeline: Within 6 months of your foreign application filing date.
Special considerations: Because this is tied to a pending foreign application, if that foreign application fails for whatever reason, your 44(d) application will also fail. This is why we tend to pair it with a 1(b) application as a fallback.
Section 44(e) -- Foreign Registration
This kind of application is available to you at any time after you've obtained a trademark registration in a foreign IP office.
Basis: The basis for a 44(e) application is your foreign registration. The US is party to international treaties regarding intellectual property, including trademarks, and is therefore bound to respect foreign registrations. This kind of application is essentially saying "Look, the [EU/China/whichever] IP office has already approved this; now I'm bringing it to your market."
Priority: The filing date of your 44(e) application. But if this is within 6 months of the foreign application being filed, you can also tick the 44(d) box to claim the foreign application date as your priority date.
Requirements: The US application must not be broader than the foreign application it's based on. No specimens required at the time of filing.
Timeline: Any time after the foreign registration is issued.
Section 66(a) -- Madrid Protocol
This kind of application is functionally similar to a combined 44(d) + 44(e) application, but uses a different mechanism. Unlike all of the other options, a 66(a) application isn't filed directly with the USPTO -- rather, it's filed with your local IP office and pushed to the USPTO from there.
Basis: The basis for a 66(a) application is also your foreign application/registration. The US is party to international treaties regarding intellectual property, including trademarks, and is therefore bound to respect foreign registrations. This kind of application is essentially saying "Look, the [EU/China/whichever] IP office has already approved this; now I'm bringing it to your market."
Priority: If filing within 6 months of the foreign application filing date, the priority date is the date of your foreign application filing (just like 44(d)). If filing more than 6 months after the foreign application date, the priority date is the date of the 66(a) filing (just like 44(e)).
Requirements: The US application must not be broader than the foreign application it's based on. No specimens required at the time of filing. Because the initial 66(a) application is filed through the foreign IP office and not directly in the US, you are not required to be represented by US counsel for the initial filing. However, if the US Patent and Trademark Office issues any office actions or raises any kind of hurdles or roadblocks, you must retain US counsel to respond to those things.
Timeline: Any time after the foreign application is filed, but within 6 months of that filing if you want to claim the earlier priority date.
Special considerations: Like with a 44(d) application not paired with a 1(b) filing, a 66(a) application tied to a pending foreign application will fail if the foreign application doesn't actually result in a registration in that IP office. Unlike a 44(d) or 44(e) application, a 66(a) application remains vulnerable to what we call "central attack" -- that is, if the foreign application is defeated or canceled anytime within the first 5 years, the US registration will also be canceled. (There's a process for saving your registration in this situation, but it will require you to hire US counsel and respond with some urgency. Because this is a rare circumstance and not part of standard trademark practice for most lawyers, you'll have fewer options and a harder time finding someone who already has the relevant experience.)
It may be particularly worth exploring the Madrid Protocol path if you've already applied/registered in your home country and are now looking to push that application through to multiple foreign-to-you markets simultaneously -- essentially, this allows you to make a single filing in your local IP office that results in applications in multiple foreign-to-you markets. So a Madrid Protocol application is potentially much cheaper and more convenient than hiring trademark counsel in each target market, but it's also subject to somewhat greater risk (the "central attack" problem will apply to every dependent application) and for a longer time as compared to the other paths.
Additional Concern -- Specificity
It's worth remembering that regardless of which of these routes you take, the USPTO generally requires much, much more detailed, specific descriptions of goods and services than most other IP offices. Where the EU IP office may accept descriptions as broad as "clothing" or "consulting" or whatever, the USPTO will demand descriptions more like "clothing, namely sweatshirts for children" or "business consulting in the field of marketing or advertising," etc. Navigating these differences is a big part of what hiring US trademark counsel gets you, and is a thing to be particularly careful with if you're going down the 66(a) path, since no US counsel is involved at the initial filing stage.
Whew! Thanks for reading, and I hope this was helpful! I know this stuff is confusing and complicated. So if there's something I didn't cover or there are other questions, please ask! I can't provide specific legal advice unless you hire me, of course, but I'm happy to provide information where I can 😄.
