Filing a U.S. Trademark From Outside the U.S.: The Five Routes

In June 2025, most U.S. trademark applications from owners outside the United States did not come through the Madrid Protocol. They were filed directly with the U.S. Patent and Trademark Office, the same way an American company files.

Of the 50,495 U.S. trademark applications filed in June 2025, 17,307 belong to an owner the USPTO record lists as being from outside the U.S. Of those, 9,503 claimed the mark was already in use in the U.S. and 4,982 claimed an intent to use it. Only 2,043 arrived through Madrid. Another 816 claimed the filing date of an application in another country, and 578 relied on a registration there. (One application can claim more than one route, so these counts add up to a little more than the total.)

There are five routes into the U.S. register, and each one is named after the section of the Trademark Act that creates it. They differ in what you must prove, which date protects you, and what can go wrong later. This guide explains each in plain terms. It is a map for the conversation with your U.S. attorney, not legal advice.

One rule applies to every route: you need a U.S. attorney

Since 2019, an applicant whose domicile is not located within the United States or its territories must be represented by an attorney who is an active member in good standing of the bar of a U.S. state, commonwealth or territory. Your domicile is your permanent legal residence or, for a company, its headquarters. A U.S. mailing address does not change it: an address that only forwards mail generally may not serve as a domicile address.

There is one partial exception, covered below: a Madrid filing can reach the USPTO without a U.S. attorney, but you will need one as soon as the examiner raises any issue.

Why the filing date matters in the U.S.

In many countries, the first to file wins. The U.S. starts from use: a business that has genuinely used a mark in the U.S. can have rights in it without any registration. The application still matters a great deal. Once your mark registers on the Principal Register, the filing date counts as nationwide "constructive use": registration generally gives you nationwide priority from that date for the goods and services it covers. That priority is subject to earlier rights, such as those of someone who used the mark, or filed for it, before you.

So the practical question behind every route is the same: which date will the USPTO treat as your filing date?

Route 1: Section 1(a), already in use in the U.S.

This is the standard application for a mark you are already using to sell goods or services to U.S. customers. You give the date you first used the mark and a specimen, such as a photo of the product label or a screenshot of the page where U.S. customers buy. Use only in another country does not count: the use must be in commerce the U.S. Congress can regulate, such as sales to customers in the U.S.

A Section 1(a) filing on its own takes the U.S. filing date. If you also qualify for and timely claim Section 44(d) priority, you can get the earlier date described in Route 3.

Route 2: Section 1(b), intent to use

If you have not started selling in the U.S. yet, you can file on a sworn statement that you have a bona fide intention to use the mark. The filing date reserves your place.

The catch is the follow-up. After the USPTO approves the mark, it issues a notice of allowance. You then have six months to file a statement of use, with a specimen, showing the mark is now in use. You can request up to five six-month extensions, each filed before the current deadline runs out and each with a sworn statement that you still intend to use the mark; after the first, each one also needs a showing of good cause. That is 36 months at most. Filed electronically, the statement of use costs $150 per class and each extension $125 per class.

Route 3: Section 44(d), priority from your home application

Section 44 is open to an applicant whose country of origin is party to a trademark treaty with the U.S. or gives U.S. nationals reciprocal rights. If you filed for the mark in such a country, you can claim that country's filing date, as long as both the U.S. application and the priority claim are filed within six months of your first foreign application. If you filed in your home country in March and in the U.S. in August, your U.S. application is treated as if it had been filed in March.

Section 44(d) gives you the date, not a reason to register. The application must still include a statement that you have a bona fide intention to use the mark in the U.S., and the goods and services may not exceed the scope of the identification in the foreign application. Unless you say otherwise, the USPTO presumes you will rely on your foreign registration once it issues (Route 4). If the application has no other problems, the examiner suspends it until that registration arrives. You can also add Route 2 so the application can go forward on intent to use instead.

The earlier date has limits. It does not affect rights other people acquired before your foreign filing.

Route 4: Section 44(e), your foreign registration

If your mark is already registered abroad, the U.S. registration can rest on that. You must submit a copy of the registration showing the owner's name, the mark, and the goods or services, with a translation if it is not in English, and state a bona fide intention to use the mark in the U.S. Use in commerce is not required before registration, and no specimen is needed.

Section 44(e) on its own does not carry over the foreign filing date. The U.S. filing date applies unless you also make a valid priority claim under Route 3.

Three conditions trip people up:

1. It must be your "country of origin." The statute defines it as the country where you have a bona fide and effective industrial or commercial establishment; if you have none, the country where you are domiciled; and failing both, your nationality. A registration from somewhere you merely do business may not qualify.
2. It must still be in force when the U.S. registration issues.
3. It caps your goods and services. The U.S. identification may not exceed the scope of the identification in the foreign registration.

A foreign registration does not skip examination. The law says the mark "may be registered on the principal register if eligible," so the USPTO examines it like any other application. Once registered, the U.S. registration is independent of the foreign one.

Route 5: Section 66(a), the Madrid Protocol

Madrid lets you file one international application through your home trademark office and designate the U.S. among other countries. The World Intellectual Property Organization (WIPO), which runs the system, sends the request to the USPTO. In the U.S. it is called a request for extension of protection, and it is examined under the same standards as any other application for registration on the Principal Register.

What is different:

• You still need U.S. intent. The request for protection in the U.S. must include a declaration that you have a bona fide intention to use the mark in U.S. commerce.
• Your filing date is the international registration date, or the date WIPO recorded a later designation of the U.S. You can still claim your home application's date, but through Madrid's own priority claim, not Route 3: the request must contain a claim of priority, and the international registration (or the recording of the U.S. designation) must come no later than six months after your first home filing.
• No U.S. attorney is needed to file. These requests arrive from WIPO and generally do not name one. But if the examiner issues any refusal or requirement, the applicant must appoint a qualified U.S. attorney to answer it.
• WIPO controls the classes, so they cannot be changed in the U.S., while the USPTO still requires its own level of detail in the wording of the goods and services.
• There is no fallback register. There is no provision for registering a Madrid filing on the Supplemental Register, the USPTO's second-tier register for marks that are not yet distinctive. If the mark is not registrable on the Principal Register, the U.S. refuses it.
• You cannot switch routes, except by the transformation described next.

The biggest risk is "central attack." For five years from the international registration date, the international registration depends on your home application or registration. If that home filing is restricted, abandoned, cancelled or expires during those five years, in whole or for some goods or services, WIPO cancels the international registration to the same extent, and the USPTO cancels the U.S. extension of protection for those goods or services with it. A proceeding against the home filing that began within the five years can still have this effect after they end.

There is a way back, called transformation. If WIPO cancels the international registration at the request of your home office, you can file a regular U.S. application for the same mark, for the goods or services that were cancelled, within three months of that cancellation. It is treated as filed on the international registration date or, if the U.S. was added by a later designation, on the date that designation was recorded, and it keeps any priority; but it must meet the requirements of the route you refile under.

How the routes compare in practice

Applications filed in June 2023 by owners the USPTO record lists as being from outside the U.S. have had more than three years to work through the system. Each application is counted once, in this order: Madrid first, then a foreign registration, then U.S. use, then intent to use; 311 that fit none of these are left out. "Registered" means a registration was issued, including some that were later cancelled. As of October 2026:

• Of 2,430 Madrid filings, 1,868 have registered, or 76.9%.
• Of 654 based on a foreign registration, 523 have registered, or 80.0%.
• Of 8,363 claiming U.S. use, 6,714 have registered, or 80.3%.
• Of 4,228 intent-to-use filings, 2,031 have registered, or 48.0%; another 1,681 are dead.

Among the 1,681 dead intent-to-use applications, 1,028 were recorded as abandoned because no statement of use was filed. The Madrid, foreign-registration and use-based groups registered at similar rates.

Every route ends at the same checkpoint

However you got in, the registration does not stay alive on its own. Between the fifth and sixth year after registration, the owner must file a sworn declaration of use: Section 8 for most registrations, Section 71 for registrations that came through Madrid. A registration based on a foreign registration or on Madrid did not need U.S. use to issue. At that checkpoint it needs U.S. use, or a showing that the nonuse is excusable.

That deadline is not permission to wait until year six. Between three and ten years after registration, anyone can petition the USPTO to cancel goods or services for which a registered mark has never been used, a proceeding called expungement.

Which route fits

• Already selling in the U.S.: Route 1.
• Not selling in the U.S. yet, and no foreign filing in the last six months: Route 2, or Route 4 if you hold a registration in your country of origin.
• Filed at home within the last six months: keep the earlier date. With Route 1, 2 or 4, add Route 3; with Madrid, claim priority in the international application, because a Madrid filing cannot be combined with another route.
• Filing in several countries at once from a home application: Madrid reaches them with one international application, at the cost of five years of central-attack risk and less flexibility in the U.S.

Whichever route you choose, the USPTO holds the wording of your goods and services to its own standard of detail, even for Madrid filings. The USPTO's ID Manual lists the wording it accepts. For the timing of the intent-to-use follow-up, see intent-to-use vs. use-based filings; for U.S. businesses going the other way, see the Madrid Protocol guide for U.S. filers. Forms and fees for every filing are in the USPTO trademark guide.

To see which route a registered mark used, open its page on GleanMark: the Basis tab shows each of the five routes, whether the application was filed under it, and whether it relies on it now.

Register figures measured 2026-10-13 against USPTO records. "From outside the U.S." uses the owner shown in the USPTO record today and its listed citizenship or country of organization, or its address country where neither is given; applications with no country listed (24,649 of the June 2025 filings) are not counted as outside the U.S. This article explains public USPTO rules and is not legal advice.