International Practice
Ortman Law Firm represents foreign applicants and works alongside foreign IP firms in the prosecution of trademark and service mark applications before the United States Patent and Trademark Office. The firm handles direct engagements and referred matters across all filing bases, in every jurisdiction the USPTO accepts.
The Rule
Since August 2019, the United States Patent and Trademark Office has required all foreign-domiciled trademark applicants, registrants, and parties to TTAB proceedings to be represented by a U.S.-licensed attorney in all matters before the Office.
The rule applies to individuals domiciled outside the United States and to entities whose principal place of business is outside the United States. It applies regardless of the filing basis, including applications filed directly under § 1(b), § 44(d), § 44(e), or designated through the Madrid Protocol under § 66(a). It applies to office action responses, post-registration maintenance, and contested proceedings.
Foreign attorneys, including those qualified to practice intellectual property law in their home jurisdictions, cannot represent foreign applicants before the USPTO. Pro se filings by foreign-domiciled applicants will be refused for failure to comply with the representation requirement.
37 C.F.R. § 2.11(a)For Foreign Applicants
For companies and individuals based outside the United States seeking to register a mark with the USPTO, Ortman Law Firm provides direct representation through every stage of the application and its life cycle.
Knockout searches of the USPTO database and common-law sources, with a written risk assessment delivered before any filing is made. Visitors receive an initial clearance read at no cost during the first consultation.
Direct § 1(b) intent-to-use applications, § 44(d) priority filings within the six-month Convention window, § 44(e) registration-based applications, and U.S. designations of Madrid Protocol international registrations under § 66(a).
Substantive responses to refusals on likelihood-of-confusion, descriptiveness, specimen sufficiency, and identification grounds. Responses are drafted with U.S. examining attorney practice in mind, not generic templates.
Section 8 declarations of use, Section 15 declarations of incontinent right, Section 9 renewals, and the maintenance docket that runs for the life of the registration. Watch services for monitoring third-party filings against your mark.
Oppositions, cancellations, and concurrent use proceedings before the Trademark Trial and Appeal Board. Representation through the discovery, trial, and appeal phases.
Demand letters, cease-and-desist correspondence, licensing arrangements, and coordination with U.S. litigation counsel where federal court enforcement becomes necessary.
For Foreign Firms & In-house Counsel
For non-U.S. law firms and in-house IP teams that handle trademark portfolios for their own clients, Ortman Law Firm serves as dedicated U.S. counsel on referred matters — with the professional discipline the relationship requires.
The firm undertakes only the work referred. Trademark matters do not become entry points to corporate, employment, contract, or other unrelated U.S. legal services. The referring firm's relationship with their client is respected without exception.
The firm accommodates the referring firm's preferred communication arrangement — whether all correspondence routes through your firm, you are copied on substantive matters, or direct contact with the end client is approved.
Clear written engagement letters, defined scope, defined fee structure agreed before work begins. No surprise invoices. International wire transfers accepted; payment terms negotiated to fit your firm's billing cycle where helpful.
Status updates, deadline tracking, and post-filing correspondence delivered in the format your firm prefers. The firm's docket integrates with yours rather than replacing it.
Inquiries from foreign counsel receive a substantive response within one U.S. business day. Urgent matters — particularly Convention priority deadlines and office action response windows — are handled with the timing they require.
The firm is structured to handle both single referrals and ongoing portfolios. Repeat referral relationships with foreign IP firms are welcomed and managed with consistent attention regardless of matter size.
Filing Bases
Foreign applicants have access to filing bases that domestic U.S. applicants do not. Each carries distinct timing, evidentiary, and dependency considerations. The firm advises on which basis fits a given matter and prosecutes filings on all of them.
Bona fide intent to use the mark in U.S. commerce. Filing date establishes constructive priority; actual use must be demonstrated before registration issues.
Priority claim based on a foreign application filed within the prior six months under a Paris Convention country. Establishes a U.S. filing date back to the foreign filing date.
Application based on an existing registration in the applicant's country of origin. No requirement to demonstrate U.S. use before the U.S. registration issues.
U.S. designation of an international registration filed through WIPO. Examined by the USPTO under U.S. standards; U.S. counsel required from the point of substantive examination.
Professional Courtesy
For matters referred by your firm, we operate on principle: your relationship with your client is respected without exception.
The firm undertakes the U.S. trademark work that has been referred, communicates through whatever channel the referring firm prefers, and does not solicit work outside the scope of the referral. When the matter concludes, the client returns to the referring firm. When the referring firm has another U.S. trademark matter, this firm is available.
This is not a marketing position. It is how the firm practices.
Practical Matters
The firm practices in English. Foreign-language documents are accepted as exhibits; correspondence and filings are in English as required by USPTO rules.
The firm operates on U.S. Central Time. Inquiries from any time zone receive a substantive response within one U.S. business day, often faster for urgent priority and response deadlines.
International wire transfers accepted. Invoices issued in U.S. dollars. Engagement letters define scope and fee structure before work begins.
Initial consultation by video conference or telephone, at no cost, to discuss the proposed mark, filing strategy, and engagement terms.
Standard conflict checks are performed before engagement. The firm represents trademark applicants only; no representation is undertaken in matters adverse to any current client.
All communications and pre-filing strategy discussions are protected by U.S. attorney-client privilege. Information shared in initial consultations is treated as confidential whether or not engagement follows.
For foreign applicants planning a U.S. filing, and for foreign firms with a referral — a brief initial conversation costs nothing and clarifies the path forward.
Contact the firm