Filing a trademark in the USA is done through the United States Patent and Trademark Office (USPTO) under one of five bases set out in the Lanham Act, the US federal trademark statute: actual use, intent-to-use, foreign priority, foreign registration, or Madrid Protocol extension. Foreign-domiciled applicants must be represented before the USPTO by a US-licensed attorney for all trademark matters; for Madrid Protocol designations the WIPO filing itself is transmitted through WIPO, but any USPTO prosecution response, opposition defence, or post-registration filing requires US counsel.
This guide is for businesses outside the United States, including Indian companies and startups, who plan to register a trademark at the USPTO. It explains who can file, the five filing bases, direct USPTO vs Madrid Protocol, application inputs, fees, the registration timeline, Office Action deadlines, and maintenance filings.
| Quick answer |
| • Five filing bases: Section 1(a) use, 1(b) intent-to-use, 44(d) priority, 44(e) foreign registration, 66(a) Madrid extension • Base USPTO fee: $350 per class (Sections 1 and 44); $600 per class (Section 66(a) Madrid), verified as of May 2026 • Foreign-domiciled applicants must be represented by a US-licensed attorney under 37 CFR 2.11 • Paris Convention six-month priority window applies to Section 44(d) claims • Section 1(b) applicants must file a Statement of Use after the Notice of Allowance to obtain registration |
How to file a trademark in the USA: 10 steps
1. Conduct a USPTO clearance search.
2. Select the filing route: direct USPTO or Madrid.
3. Choose the filing basis: 1(a), 1(b), 44(d), 44(e), or 66(a).
4. Engage US counsel (mandatory for foreign-domiciled applicants).
5. Prepare owner details, mark, goods/services, priority claim, and specimen if required.
6. File via Trademark Center, or via the Indian Registry for Madrid.
7. Respond to any Office Action within the deadline.
8. Clear publication and the 30-day opposition window.
9. File the Statement of Use (Section 1(b) only).
10. File Section 8, 9, 15, or 71 maintenance documents on cycle.
Each step is explained below.
Who can file a US trademark and who must sign it
Any natural or legal person who owns or intends to use a mark in US commerce can apply for federal trademark registration at the USPTO. Nationality does not restrict ownership: an Indian company, a UK partnership, a Singapore-based individual, or a US corporation can each be the applicant of record.
The decisive question for any non-US applicant is the domicile rule. Under 37 CFR 2.11, codified by the USPTO Final Rule of 2 July 2019 and effective 3 August 2019, any applicant whose domicile is outside the United States or its territories must be represented before the USPTO by an attorney admitted to the bar of a US state, the District of Columbia, or a US territory (37 CFR 11.14(a)). This is the US Counsel Rule. It applies to entities with their principal place of business outside the United States and to individuals with permanent legal residence outside the United States, and it covers all USPTO trademark matters: new applications, responses to office actions, statements of use, maintenance filings, and proceedings before the Trademark Trial and Appeal Board.
In practice, a foreign-domiciled applicant cannot sign or submit a USPTO filing in its own name. The applicant remains the trademark owner; Intepat coordinates the filing programme, but the attorney of record must be US-licensed. A filing made without compliant representation will typically be refused.
The five filing bases under the Lanham Act
The Lanham Act, codified at 15 USC sections 1051 and following, recognises five distinct bases on which a US trademark application can be filed. The basis is declared at filing and carries through to prosecution.
| Section 1(a): use in commerce | 15 USC 1051(a) | The mark is already used in US commerce; a specimen and dates of first use are submitted at filing |
| Section 1(b): intent to use | 15 USC 1051(b) | The applicant has a bona fide intention to use the mark but has not begun use; registration follows a later Statement of Use |
| Section 44(d): Paris priority | 15 USC 1126(d) | A corresponding foreign application has been filed in a Paris Convention country within the previous six months, and the US filing claims that earlier date |
| Section 44(e): foreign registration | 15 USC 1126(e) | The applicant owns a registered trademark in its country of origin and seeks US registration on the strength of that registration |
| Section 66(a): Madrid extension | 15 USC 1141f | An existing WIPO International Registration designates the United States as a country of extension under the Madrid Protocol |
For an Indian applicant, all five bases are technically available. Section 44(e) requires an Indian registration in hand; Section 66(a) requires an Indian application under Section 18 or registration under Section 23 as the basic application or registration for the international application under Section 36D of the Trade Marks Act 1999.
Direct USPTO filing versus Madrid Protocol extension
The two operationally distinct routes for a non-US applicant are direct USPTO filing under Sections 1 or 44, and Madrid Protocol extension under Section 66(a). The choice turns on cost, dependency risk, prosecution control, and portfolio breadth.
Direct USPTO filing treats the US application as a stand-alone matter: US counsel files, the USPTO examines, the mark is published in the Trademark Official Gazette, and registration (absent successful opposition) issues on the principal register. The US registration is independent of any foreign filing for its survival.
Madrid Protocol extension via India as Office of Origin is governed by Sections 36A to 36G of the Trade Marks Act 1999 and Rules 63 to 74 of the Trade Marks Rules 2017. The applicant files an Indian application under Section 18 (or relies on a Section 23 registration). That basic filing anchors the international application, filed electronically through the Trade Marks International Application System under Rule 65. The Indian Registry certifies the contents in Form MM2(E) under Rule 66(1) and forwards them to the WIPO International Bureau within two months, subject to the handling fee paid in rupees per Rule 67. WIPO records the international registration and notifies designated Contracting Parties; the USPTO treats the US designation as a Section 66(a) application.
The Madrid route carries a five-year dependency window. Under Section 36D(5) of the Indian Act, if the Indian basic filing is withdrawn, cancelled, expires, or is finally refused within five years of the international registration date, the protection in all designated states, including the United States, ceases. This is the central attack risk. The proviso to Section 36D(5) extends the dependency where an appeal, withdrawal action, or opposition is initiated before the five-year expiry: the final decision is deemed to have taken place within the five-year window. Direct USPTO filing carries no such dependency.
Where central attack succeeds, Article 9quinquies of the Madrid Protocol provides a transformation remedy: the holder may file national applications in each designated country within three months of cancellation, retaining the international registration date as the effective filing date. Transformation has strict scope and procedural requirements and should be initiated promptly through local counsel.
| Per-class fee at USPTO/WIPO | $350 per class | $600 per class plus WIPO basic and complementary fees |
| US counsel required at filing | Yes (37 CFR 2.11) | Yes for US prosecution; not for the WIPO filing itself |
| Dependency on Indian filing | None | Five years from international registration date |
| Office Action response window | 3 months, extendable once by 3 months for $125 | 6 months, no extension |
| Suits portfolios covering | One or two jurisdictions | Multiple Madrid countries from one filing |
When the US is the only target, direct filing is generally simpler. When the US is one of several Madrid Contracting Parties being targeted, a single international application can be economical, but the comparison depends on WIPO basic and individual fees, classes and countries, US and local attorney fees, and country-specific prosecution risk; confirm with the WIPO fee calculator and local-counsel assumptions.
What an application requires: mark, goods/services, specimen
A USPTO trademark application must identify the mark, the owner, the goods or services, and the filing basis.
The mark is filed either as a standard character mark (no stylisation claimed) or as a special form mark (logo, design, stylised lettering, colour claim). The Lanham Act sets out the statutory bars to registration in 15 USC 1052, including marks that are merely descriptive, primarily a surname, or deceptively misdescriptive. Marks confusable with prior US registered or pending marks are refused under Section 2(d).
Goods and services are identified using the Nice Classification, the 45-class international system maintained by WIPO. The USPTO Trademark Identification Manual offers pre-approved descriptions; using one avoids the $200 per class free-form text surcharge.
A specimen of use is required at filing for Section 1(a) and at the Statement of Use stage for Section 1(b). The specimen must show the mark as actually used in commerce: typically a label, tag, packaging, or product photograph for goods; a website screenshot, invoice, or marketing material for services. Under section 904 of the Trademark Manual of Examining Procedure (TMEP), digitally manipulated specimens are refused.
A domicile address is required for every applicant, separately from the correspondence address; this determines whether the US Counsel Rule applies. Section 44(d) requires the foreign application particulars (filing date, country, application number); Section 44(e) requires a certified copy of the foreign registration with an English translation if not in English. For both, the §44 goods/services in the US application may not exceed the scope of those in the foreign application or registration (TMEP 1402.01(b); 37 CFR 2.32(a)(6)). Section 66(a) requires no separate USPTO inputs at the WIPO transmission stage; subsequent USPTO prosecution, opposition defence, or post-registration filings must comply with the US Counsel Rule.
For Indian applicants planning a Section 44(d) priority claim, the corresponding Indian filing must be the first filing in a Paris Convention country and precede the US filing by no more than six months. See the Intepat guide to trademark registration in India.
USPTO fees and predictable cost ranges
USPTO trademark fees were restructured by the Final Rule of 18 November 2024 and brought into force on 18 January 2025, with Section 66(a) adjustments effective 18 February 2025. All fees below are verified against the USPTO fee schedule as of May 2026.
| Base application under Sections 1 and 44 (Trademark Center) | $350 |
| Section 66(a) Madrid application or subsequent designation (collected by WIPO) | $600 |
| Insufficient information surcharge | $100 |
| Free-form goods/services description surcharge | $200 |
| Long identification surcharge, per additional 1,000 characters per class | $200 |
| Statement of Use (Section 1(b)) | $150 |
| Extension of Time to File Statement of Use (per 6-month extension, electronic) | $125 |
| Request for 3-month extension to respond to Office Action | $125 (single request per Office Action) |
| Section 8 Declaration of Use | $325 |
| Section 9 Renewal | $325 |
| Section 15 Declaration of Incontestability | $250 |
For a typical single-class direct Section 1(b) filing, the predictable USPTO outlay is $350 at filing plus $150 at the Statement of Use, totalling $500 per class for the first registration; each six-month SOU extension adds $125 per class electronically. US attorney fees are separate. For a Madrid 66(a) designation, the per-class US fee paid through WIPO is $600; the Indian handling fee under Rule 67 is paid in rupees, and WIPO basic and complementary fees in Swiss francs. The Madrid route can be economical where several Madrid countries are designated, but the comparison should be confirmed using the WIPO fee calculator and local-counsel assumptions.
From filing to registration: the USPTO timeline
The USPTO publishes a typical timeline for use-based and intent-to-use applications. The path below assumes no Office Action, no opposition, and no extensions; actual timelines often run longer, and current averages are published live at the USPTO’s trademark processing wait times page.
1. Filing. Application submitted through the Trademark Center; a serial number issues the same day.
2. Examination assignment. The USPTO’s current-fiscal-year target is 5 months from filing to first examining action, with a long-term goal of 4.5 months; the live average is on the USPTO trademark processing wait times page.
3. Examination. The examining attorney reviews compliance with the Lanham Act and 37 CFR Part 2, and either approves the application for publication or issues an Office Action.
4. Publication. If approved, the mark is published in the Trademark Official Gazette.
5. Opposition window. Any party who believes it would be damaged by registration has 30 days from the publication date to file a notice of opposition or a request to extend (15 USC 1063(a)).
6. Registration or Notice of Allowance. For Section 1(a), 44(e), and 66(a) applications, the registration certificate generally issues after publication absent successful opposition. A Section 44(d) application does not itself provide a registration basis: before registration, the applicant must establish one, typically by relying on Section 44(e) once the foreign registration grants, or by amending to a use-based basis. For Section 1(b), a Notice of Allowance issues approximately eight weeks after publication.
7. Statement of Use stage (Section 1(b) only). The applicant has six months from the Notice of Allowance to file a Statement of Use evidencing actual use; up to five additional six-month extensions are available, giving a maximum runway of approximately 36 months. Registration issues after acceptance.
End-to-end, the USPTO’s current-fiscal-year target for total pendency (filing to registration or abandonment) is 11 months; an application that draws Office Actions, oppositions, or Section 1(b) extensions will run longer.
Office actions, refusals, and response deadlines
A USPTO Office Action is the examining attorney’s written statement of refusals or requirements that must be resolved before the application can proceed, ranging from minor (correction to identification of goods) to substantive (a Section 2(d) likelihood-of-confusion refusal or a Section 2(e) descriptiveness refusal).
For applications under Sections 1 and 44, the response window was reduced from six months to three months by 37 CFR 2.62(a)(1)(i), effective 3 December 2022. A single three-month extension is available on filing a request and paying the $125 fee electronically before the initial deadline expires; total response time is capped at six months from the Office Action issue date. For applications under Section 66(a) Madrid extension, the response window remains six months from the Office Action issue date and no extension is available, reflecting Madrid Protocol treaty constraints.
Failure to respond, or filing an extension request without the prescribed fee, results in abandonment. A Petition to Revive is available on payment of $250 if the failure was unintentional, subject to 37 CFR 2.66.
For substantive Section 2(d) and 2(e) refusals, see responding to a USPTO office action. For Madrid-route applicants receiving a provisional refusal through WIPO, see responding to a provisional refusal. A pre-filing search materially reduces Section 2(d) risk; methodology is set out in the US trademark search guide.
Maintaining a US trademark: Section 8 and Section 9 filings
A US trademark registration requires periodic post-registration filings demonstrating continued use; failure to file results in cancellation by the USPTO.
A Section 8 Declaration of Use (15 USC 1058) is required between the fifth and sixth year after registration: a sworn statement that the mark is in use in commerce on the registered goods or services, with a current specimen. Fee: $325 per class. A six-month grace period after the sixth anniversary is available on an additional fee.
A Combined Sections 8 and 9 filing (15 USC 1058 and 1059) is required between the ninth and tenth year and every successive ninth and tenth year thereafter. Section 8 evidences continued use; Section 9 renews the registration for ten years. Combined fee: $650 per class. The six-month grace period applies.
A Section 15 Declaration of Incontestability (15 USC 1065) is optional. After five years of continuous use, the registrant may file it for $250 per class. Once accepted, incontestability protects the registration from challenge on certain grounds, including descriptiveness.
For Madrid-route US registrations, the maintenance filing is the Section 71 Declaration (15 USC 1141k) on the same cycle, with WIPO renewal every ten years.
The US maintenance regime distinguishes US trademark law from jurisdictions where renewal alone suffices: a registrant who renews under Section 9 but cannot evidence continued use under Section 8 loses the registration. A comparative view is set out in the Intepat note on trademark cancellation across jurisdictions.
Choosing the right route for your business
Route selection turns on four factors.
Current commercial position. Already used in US commerce → Section 1(a). Use intended but not begun → Section 1(b). Owns a foreign registration → Section 44(e). Filed a corresponding foreign application in the last six months → Section 44(d) for the priority date.
Portfolio breadth. US-only filing favours direct USPTO routes. A multi-jurisdiction programme targeting the US plus several Madrid Contracting Parties often favours Madrid 66(a) for administrative consolidation, with the five-year dependency factored in.
Dependency risk. Quantifiable: applicants with straightforward Indian filings face lower dependency risk than those with contested marks; the risk closes once the international registration passes five years and becomes independent.
Prosecution control and speed. Direct USPTO filing keeps prosecution self-contained with the shorter three-month Office Action response window. Madrid 66(a) carries the six-month response window but adds WIPO-interface coordination.
Intepat coordinates US trademark filings, working with US counsel as required. The global IP filing service handles route analysis, US counsel selection, pre-filing search coordination, application preparation, prosecution monitoring, and post-registration maintenance. For Indian applicants whose first step is the home filing anchoring a Section 44 or 66(a) US application, see trademark services and the trademark search pillar.
Frequently asked questions
No. Under 37 CFR 2.11, any applicant whose domicile is outside the United States or its territories must be represented by a US-licensed attorney for all USPTO trademark matters. An Indian company has its principal place of business outside the United States and is therefore a foreign-domiciled applicant. The USPTO will refuse a filing made without a compliant US attorney of record. Intepat coordinates US counsel as part of its global IP filing service.
Section 1(a) (15 USC 1051(a)) is for applicants already using the mark in US commerce on the listed goods or services at the date of filing; a specimen of use and dates of first use are required at filing. Section 1(b) (15 USC 1051(b)) is for applicants with a bona fide intention to use the mark; no specimen is required at filing, but a Statement of Use must be filed within six months of the Notice of Allowance, extendable up to five times by six-month increments.
Six months from the date of the first foreign application filed in a Paris Convention country, per Article 4C(1) of the Paris Convention and 15 USC 1126(d)(1). The US Section 44(d) application must be filed within those six months and must claim priority from the earlier foreign filing. The priority date carries through for conflict and priority purposes against intervening filings.
Three months from the Office Action issue date for applications under Sections 1 and 44, per 37 CFR 2.62(a)(1)(i), effective 3 December 2022. The deadline is extendable once by three months on payment of a $125 fee, requested before the initial three-month deadline expires. For applications under Section 66(a) Madrid extension, the response window remains six months and no extension is available.
Under Section 36D(5) of the Indian Trade Marks Act 1999, if the Indian basic application or registration that anchored the international application is withdrawn, cancelled, expires, or is finally refused within five years of the international registration date, the protection resulting from the international registration ceases in all designated countries, including the United States. After the five-year window closes, the international registration becomes independent of the Indian basic filing.
The USPTO base fee is $350 per class for applications under Sections 1 and 44 filed through the Trademark Center, verified as of May 2026. Section 66(a) Madrid extensions carry a higher per-class fee of $600 collected by WIPO. Surcharges apply for incomplete applications ($100 per class), free-form goods/services descriptions ($200 per class), and long identifications ($200 per additional 1,000 characters per class). US attorney fees are separate.
A US registration remains alive only if the registrant files a Section 8 Declaration of Use between the fifth and sixth year after registration, and a combined Sections 8 and 9 filing between the ninth and tenth year and every ten years thereafter. The Section 8 fee is $325 per class; the combined Sections 8 and 9 fee is $650 per class. A six-month grace period after each deadline is available with an additional fee. Non-filing results in cancellation.
This article describes US trademark filing procedure as governed by the Lanham Act (15 USC sections 1051 and following), the Trademark Rules in 37 CFR Parts 2 and 7, and the Trademark Manual of Examining Procedure, with cross-references to the Indian Trade Marks Act 1999 and Trade Marks Rules 2017 for the Madrid Protocol route via India as Office of Origin. Sources checked: USPTO fee schedule (37 CFR 2.6), USPTO filing-basis and process guidance, 37 CFR 2.11 and 37 CFR 11.14, USPTO Madrid Protocol guidance, and the WIPO Madrid Protocol text. Fees and procedural deadlines are USPTO-determined and liable to change; the figures stated are verified as of May 2026 and the live USPTO processing wait times page should be consulted for current averages. Foreign-domiciled applicants must be represented before the USPTO by a US-licensed attorney under 37 CFR 2.11. This guide is for general information and is not legal advice; readers should consult a qualified IP practitioner for their specific facts.