Working With U.S. Associate Counsel: What Foreign Firms Should Expect

October 7, 2026

Since the U.S. counsel rule took effect in 2019, foreign trademark firms and agents with clients domiciled outside the United States need a U.S.-licensed attorney for USPTO filings (37 CFR § 2.11). A good associate relationship makes this seamless for the client. Here is what a foreign firm should expect from, and provide to, U.S. associate counsel.

Who Does What

In a typical arrangement, the foreign firm keeps the client relationship and advises on home-country matters. U.S. counsel is attorney of record before the USPTO and is responsible for the U.S. filings. That responsibility is real: under the USPTO's rules, a practitioner presenting a paper to the Office certifies, among other things, that its factual contentions have evidentiary support after a reasonable inquiry (37 CFR § 11.18(b)). U.S. counsel will therefore review the facts rather than simply file what is sent.

What We'll Ask For

• Owner details and domicile. The client's exact legal name, entity type, and domicile under 37 CFR § 2.2(o). See our domicile article.
• The mark as it will be used in the U.S., with any translation or transliteration of non-English wording.
• Goods and services the client actually sells or plans to sell in the U.S. We'll adapt wording to U.S. identification practice.
• Basis information. Specimens and dates of use, details of the foreign application or registration for Section 44, or the international registration for a Madrid extension.
• Deadlines. Office action response dates, Section 44(d) priority windows, and post-registration dates.

Signatures and Declarations

Verified statements, such as the declaration of use or bona fide intent, are made under penalty of perjury. The client signs these with an understanding of what they say. We provide plain-English explanations so the foreign firm can walk its client through them.

Office Actions

When the USPTO issues a refusal, we report it with a summary of the issues, our assessment, and the response options, so the foreign firm can take instructions from its client. Common topics include likelihood of confusion, descriptiveness, identification of goods and services, and specimens.

What a Legitimate U.S. Associate Will Not Do

The USPTO has warned about U.S. attorneys being paid to lend their names to filings or to sponsor USPTO.gov accounts for people they don't supervise. An associate who agrees to that puts the client's filings at risk. We review and sign our own filings and don't sponsor accounts for outside staff. More in our article on credential misuse.

Communication

We work and report in English, keep reports concise, and flag deadlines prominently so they can be carried into the foreign firm's docket.

Start a Relationship

If your firm needs a U.S. associate for trademark matters, visit our page for foreign law firms and associate counsel and send us a matter instruction or an introductory inquiry.

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.