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Pretty much self-explanatory.

I am not an American, I live outside the US and, so far, my only relationship with the US is going there for holidays from time to time.

I have a software product with a specific name which is trademarked in my country.

I have a lot of clients from the US (but I do not have a business presence there), so I would like to claim ownership of my trademark there as well.

I know part of the answer is "hire an attorney that specializes on IP to do this for you", which I will at some point; but broadly speaking, I would like to know first if this is possible and under what conditions (if any). Also, if you could also throw in a ballpark estimate of how much does this cost, that'd be awesome.

Thanks!

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  • With copyrights, there is an international convention by which countries that have signed the convention recognize copyrights under the laws of other countries that have signed. I wonder whether there is a similar thing for trademarks.
    – Michael Hardy
    Commented Mar 7, 2022 at 16:53

2 Answers 2

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Yes

15 USC 1501, which is part of the Lanham Act, the basic US trademark law, provides in subsection (a)(2) that:

(2) The application [for registration of a trademark] shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.

This clearly implies that the applicant may have a citizenship other than US, or else ther ewould be nbo point in specifying the citizenship in the application.

subsection (e) of the same section provides, in relevant part:

If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark.

This makes it cleat that an applicant need not be resident in the US.,

15 USC 1141a provides that:

(a) In general

The owner of a basic application pending before the United States Patent and Trademark Office, or the owner of a basic registration granted by the United States Patent and Trademark Office may file an international application by submitting to the United States Patent and Trademark Office a written application in such form, together with such fees, as may be prescribed by the Director.

(b) Qualified owners: A qualified owner, under subsection (a), shall—
(b)(1) be a national of the United States;
(b)(2) be domiciled in the United States; or
(b)(3) have a real and effective industrial or commercial establishment in the United States.

1141a (b2) and (b)(3) make it clear that an applicant need not be a national (citizen) of the US.

The USPTO's page "Trademark FAQs" lists under the heading "General - Trademark Help - Getting Started - Other" the following Q&A:

Must I be a U.S. citizen to obtain a federal registration?

No. However, your citizenship must be provided in the application. If you have dual citizenship, then you must indicate which citizenship will be printed on the certificate of registration.

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  • Thanks David, given your answer I can then think that it is possible but I would have to open an office there or something, right?
    – Alex Morales
    Commented Mar 7, 2022 at 19:11
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    @Ale Morales Ther emay be another provision that I have missed. You might be well advised to ask someone from the USPTO, or consult a lawyer..
    – David Siegel
    Commented Mar 7, 2022 at 22:47
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Yes

Foreigners can own assets in the USA.

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  • Ownign assests in general is allowed, but that does nto settel whether trademark registration in nparticualr is allowed. Trademarks are purely stuatory, and ther is no right to register one if the statute prohibits it =in specific circumstances. The statute could, but does not, limit this to US citizens. It does limit applications to "US Nationals", those with a domicile in the US, or those with "a real and effective industrial or commercial establishment in the United States."
    – David Siegel
    Commented Mar 6, 2022 at 21:14
  • @DavidSiegel : (I presume "stuatory" is a typo for "statutory".) What would be the alternative to "purely statutory"? What property rights are not "purely statutory"? If the right to own property is not established by statute, what law establishes it? Is this a matter of "customary law"?
    – Michael Hardy
    Commented Mar 7, 2022 at 17:21
  • @Michael Hardy In the US, and in other common-law countries, the right to own property precedes any existing statutes. It is assumed by, but is not created by, statute, and many of the features of the right are matters of common-law, not statute. So is much of the law of Fraud, much of the law of real estate, and many other basic elements of US law. In those areas general principles of the common-law may more safely be assumed to control, while in the case of more recently created statutory rights, the actual text of the statute must be consulted (and cited).
    – David Siegel
    Commented Mar 7, 2022 at 17:37
  • @DavidSiegel : I am not a lawyer and don't own many books on law, but for some odd reason I have before me Property, Fifth Edition, by Jesse Dukeminier and James E. Krier, published by Aspen Publishers in 2002, and they set out immediately telling the reader about miscellaneous case histories. I thought they would start by explaining the laws that establish this institution called "property". I wonder whether something like what you said in your comment above is in there somewhere. (I haven't read most of it. I've read the haunted house case and the Vermont railroad case.)
    – Michael Hardy
    Commented Mar 7, 2022 at 18:02
  • @Michael Hardy I don't know that book, but I am cofident that it will not describe "the laws that establish this institution called 'property'" because none are known The oldest laws we have any records of already assume the institution. If you are interested in how current law came to be, I suggest The Law of the Land by Charles Rembar, which follows the history of English and then Anglo-American law from Anglo-Saxon times through much of the 20th Century. It is available as an e-book, It is written for a non-lawyer and non-historian. IMO it is very well-written and accurate.
    – David Siegel
    Commented Mar 7, 2022 at 18:12

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