The process - Filing directly with the USPTO
Filing directly with the USPTO
The USPTO requires all foreign-domiciled trade mark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the US. So if your permanent legal residence or principal place of business is outside of the US, you will need a US-licensed attorney to represent you in all trade mark matters.
An IP professional may also assist you with the selection of goods and services for your application as well as searching for similar marks already on the US register and any potential conflicts.
Trade mark attorneys typically maintain relationships with trade mark attorneys and agents in other countries. You may find that your Australian trade mark attorney already has a relationship with a US trade mark attorney with whom s/he has routinely worked.
Take a look at our finding an attorney section for more information.
Section 1(a) timeline: Use in commerce
To use this filing process you must have already started using your trade mark in commerce in the US.
Section 1(b) timeline: Intent to use
You do not need to have used your trade mark in the US to use this filing process, but must have a genuine intention to do so.
In addition to the above, a trade mark owner may file an application in the US based on an Australian application/registration (“Section 44”). Section 44(d) provides the advantage of a priority filing date to block a potential squatter, while Section 44(e) provides the advantage of not having to prove use in commerce prior to registration. These are filing bases that are best handled with the assistance of a trade mark attorney.