Foreign-Domiciled Applicants: Why the USPTO Requires a U.S. Attorney

October 7, 2026

Since August 2019, trademark owners whose domicile is outside the United States can no longer file and prosecute U.S. trademark matters on their own. The USPTO's U.S. counsel rule, codified at 37 CFR § 2.11, requires them to be represented by a U.S.-licensed attorney. If you are a brand owner based abroad, or you advise one, here is what the rule says and how it plays out in practice.

What 37 CFR § 2.11 Requires

Under § 2.11(a), "an applicant, registrant, or party to a proceeding whose domicile is not located within the United States or its territories must be represented by an attorney" as defined in 37 CFR § 11.1 who is qualified to practice under § 11.14. In short, that means a U.S.-licensed attorney. The rule adds that the Office "cannot aid in the selection of an attorney."

The rule reaches three groups:

• Applicants, including direct U.S. applications and Madrid Protocol requests for extension of protection to the United States;
• Registrants filing post-registration documents, such as declarations of use and renewals; and
• Parties to proceedings before the Trademark Trial and Appeal Board, such as oppositions and cancellations.

The Test Is Domicile, Not Citizenship

The rule turns on domicile. Under 37 CFR § 2.2(o), domicile means "the permanent legal place of residence of a natural person or the principal place of business of a juristic entity." A company's principal place of business is its headquarters, "where the entity's senior executives or officers ordinarily direct and control the entity's activities" (§ 2.2(p)).

So a foreign national who lives permanently in the U.S. is generally not covered, while a U.S. citizen living permanently abroad may be. A company incorporated in Delaware but run from headquarters overseas can be covered. See our companion article on the domicile requirement for more detail.

The USPTO Can Ask Questions

Section 2.11(b) allows the Office to require "such information or declarations as may be reasonably necessary" to decide whether an applicant is subject to the rule. Examining attorneys do raise domicile requirements when an address looks like a mailbox service or registered agent, or doesn't fit the rest of the record.

Section 2.11(e) is the warning: providing false, fictitious, or fraudulent information about these requirements is treated as submitting a paper for an improper purpose under § 11.18(b), with the sanctions that follow.

What Happens If You File Without U.S. Counsel

A foreign-domiciled applicant who files alone will get an Office action requiring U.S. counsel. Failing to respond is handled under the ordinary abandonment rules (§ 2.11(d)). Under § 2.11(f), if the only remaining requirements are the U.S. counsel requirements (with or without a related processing fee), they can be reviewed only by petition to the Director, not by appeal.

In practice, the cleanest course is to appoint U.S. counsel before filing, so the application is right from day one: the correct domicile, an accurate identification of goods and services, and a filing basis that fits the owner's plans.

What U.S. Counsel Actually Does

The rule is not a formality. Counsel of record signs or reviews submissions and is responsible for them under the USPTO's rules of practice. A properly engaged U.S. attorney will:

• confirm the owner's identity and domicile;
• choose and support the filing basis: use, intent to use, Section 44, or Madrid;
• draft goods and services descriptions that meet U.S. standards;
• review specimens for genuine use in U.S. commerce; and
• respond to Office actions and keep the registration maintained.

Be wary of anyone offering to "lend" a U.S. attorney's name to a filing. The USPTO has warned that this practice can lead to sanctions; see our article on credential misuse.

Working Through a Foreign Law Firm

Many foreign brand owners reach U.S. counsel through their local trademark firm. That works well when the roles are clear: the local firm advises on home-country matters, and U.S. counsel takes responsibility for the USPTO filing. If you are a firm looking for a U.S. associate, see our page for foreign law firms and associate counsel.

This article is general information, not legal advice, and reading it does not create an attorney-client relationship. Every situation depends on its own facts, and no particular outcome can be guaranteed. Laws and government fees change; confirm current requirements before acting.