A company based outside the United States that wants its brand protected in the USA and Latin America needs two kinds of help: a US-licensed attorney for anything filed with the USPTO, and local agents in most Latin American offices. Good cross-border IP services for the USA & Latin America put both under one coordinator, so the filings share a single plan, a single specification and the same owner. This guide is for European and Latin American companies planning that expansion.
Key takeaways
- Under 37 CFR 2.11, a trademark applicant or registrant domiciled outside the US must be represented by a US-licensed attorney before the USPTO.
- The US can be reached nationally or through the Madrid System; a Madrid designation needs the MM18 declaration of intention to use, in English and unaltered.
- US registrations must be kept alive with a declaration of use between the fifth and sixth year, whatever the filing route.
- In mainland Latin America, Madrid covers only Brazil, Chile, Colombia and Mexico; Argentina, Peru, Uruguay, Paraguay and Central America need national filings through local agents.
- The common failure is not legal but organisational: different owners, specifications and deadlines in each country.
Who must use a US-licensed attorney before the USPTO?
The rule is short. 37 CFR 2.11(a), introduced in 2019, says that an applicant, registrant or party to a proceeding whose domicile is not in the United States or its territories must be represented by an attorney qualified to practise under the USPTO rules, and that the Office cannot help choose one. The USPTO’s own page, “Do I need an attorney?” (updated 21 August 2025), puts it plainly: foreign-domiciled applicants and registrants must have a US-licensed attorney, and must keep their domicile address current in filings.
Three consequences matter in practice:
- The requirement applies to applicants, registrants and parties to proceedings. It covers the application, responses to office actions and post-registration filings.
- The USPTO can ask for information to check domicile (2.11(b)), and false information is treated as a filing for an improper purpose, subject to sanctions (2.11(e)).
- The USPTO warns that it does not endorse private filing companies and that some may mislead applicants. A low-cost “filing service” that is not a US attorney does not meet the rule.
National filing or Madrid designation: which route into the US?
The USPTO lists the filing bases: current use in commerce (Section 1(a)), bona fide intent to use (Section 1(b)), a foreign application filed within the previous six months (Section 44(d)), a foreign registration from the country of origin (Section 44(e)) and an international registration extended to the US under the Madrid Protocol (Section 66(a)).
| Route | What the US requires | Who files and responds |
|---|---|---|
| National, intent to use (1(b)) | Registration only after an accepted statement of use: six months from the notice of allowance, extendable up to 36 months in total | US-licensed attorney |
| National, foreign basis (44(d) or 44(e)) | Sworn bona fide intention to use; under 44(e), the foreign registration must be in force when the US registers | US-licensed attorney |
| Madrid designation (66(a)) | Form MM18 annexed to the international application or subsequent designation, in English and unmodified | Office of origin files; any US refusal is answered by a US-licensed attorney |
| Maintenance (all routes) | Section 8 declaration of use between years 5 and 6; renewal between years 9 and 10; six-month grace period with surcharge | US-licensed attorney |
The MM18 form (March 2026 edition) contains the exact wording of the declaration and warns that any deletion or change makes it irregular; it must be signed in English even if the international application is in Spanish or French. On intent-to-use applications, the USPTO allows up to five six-month extensions after the notice of allowance, a maximum of 36 months. And under its maintenance rules, Madrid-based US registrations follow the same declaration deadlines, while the international registration is renewed at WIPO.
Madrid is attractive for companies with a base mark in Spain, the EU, Mexico, Brazil, Colombia or Chile, all of which are Madrid members according to WIPO Lex. A national filing gives more control over the US specification and avoids dependence on the base mark during its first five years.
What changes in Latin America?
Latin America has no regional trademark title. According to WIPO Lex, the mainland countries in the Madrid Protocol are Brazil (since 2019), Chile (2022), Colombia (2012) and Mexico (2013). Argentina, Peru, Uruguay, Paraguay, Ecuador, Bolivia, Costa Rica, Panama, Guatemala and the Dominican Republic are not, so each needs a national application, usually through a local agent.
Local rules also shape the plan. In the Andean Community (Bolivia, Colombia, Ecuador and Peru), Decision 486 lets a registration be cancelled for three years of non-use, but use in any member country counts (Article 165), and licences have no effect against third parties until recorded (Article 162). In Brazil, the Industrial Property Law 9.279/1996 requires licence agreements to be recorded with the INPI to have effect against third parties (Article 140), and a registration can lapse after five years without use (Article 143).
How do you run the US and Latin America under one coordinator?
In practice, a workable model has four layers:
- One master record: the owner entity, the exact mark, a master list of goods and services and the base filings. Every country takes its specification from this list, adapted to local practice.
- One filing calendar: use the six-month priority from the first filing to line up the US, Madrid and national filings, so the earliest date protects every market.
- The right local signatory: a US-licensed attorney for the USPTO and qualified agents in each Latin American office, all briefed from the same file.
- One docket: Section 8 declarations, Andean and Brazilian use periods, renewals and licence recordals tracked in a single place.
This is what our cross-border IP strategy service for the US and Latin America provides: one plan and one point of contact, with the US attorney and the Latin American agents working to the same instructions.
What this means for your business
- Check where the company is domiciled for USPTO purposes. If it is outside the US, budget for US counsel from day one, including for office actions and maintenance.
- Decide the US route before filing at home. If Madrid is the plan, prepare the MM18 and a US-ready specification with the base application.
- Map Latin America by system: Madrid countries, Andean countries and national-only countries, each with its own agent and deadlines.
- File in the name of the entity that will own the brand long term. Correcting the owner later means assignments and recordals in every country.
- Plan for proof of use. The US asks for it at year five; Brazil and the Andean countries allow cancellation for non-use.
Where trademarks are the main asset, our international trademark registration team handles the European base filings and Madrid applications that feed the US and Latin American strategy.
Where companies get this wrong
- Filing in the US without a US attorney. A foreign-domiciled applicant that files alone, or through a non-attorney service, will face a requirement for representation and delays.
- Editing the MM18. Any change to the declaration makes it irregular, which puts the US designation at risk.
- Treating a US registration as permanent. Without the Section 8 declaration between years five and six, the registration is cancelled after the grace period.
- Different owners in different countries. A distributor or local subsidiary filing in its own name breaks the chain of title and can block later assignments.
- Copying one specification everywhere. US practice and Latin American offices read goods and services descriptions differently; a single text, unadapted, invites refusals.
Frequently asked questions
Do I need a US attorney if my company is based in Spain or Mexico?
Yes. Under 37 CFR 2.11, applicants and registrants whose domicile is outside the United States must be represented before the USPTO by a US-licensed attorney. That covers the application, office action responses and maintenance filings. US-domiciled applicants are not required to hire one, although the USPTO recommends considering it.
Can I designate the US through the Madrid System?
Yes, if your base mark is in a Madrid member such as Spain, the EU, Mexico, Brazil, Colombia or Chile. The designation must include the MM18 declaration of intention to use, in English and without changes. If the USPTO raises a refusal, the response must come from a US-licensed attorney.
Which Latin American countries cannot be reached through Madrid?
According to WIPO Lex, Argentina, Peru, Uruguay, Paraguay, Ecuador, Bolivia, Costa Rica, Panama, Guatemala and the Dominican Republic are not Madrid members. Protection there requires national applications, normally filed through local agents, ideally coordinated with your Madrid filings so priority dates and specifications match.
Can IP Global Guard coordinate my US and Latin American filings?
Yes. We prepare and coordinate the plan from Europe, file your EUIPO, OEPM and Madrid applications directly where our professionals are entitled and otherwise through qualified representatives, and coordinate local agents in Latin America. We do not act before the USPTO: US filings are signed by a US-licensed attorney, your own or one we coordinate.
One coordinator for the Americas
Expanding into the US and Latin America does not have to mean managing a dozen advisers. IP Global Guard, the IP services line of META Channel Corporation Limited, works across more than 25 jurisdictions in Europe, Latin America and Africa with one strategy and one billing relationship, and extends that plan to the US through Madrid and coordinated US counsel; see our jurisdiction coverage.
Tell us which brands you want to protect, in which countries and when you plan to launch. We will propose the route for each market, the filing calendar and the people who need to sign, all from a single point of contact. Share your market list with our team.
This article is general information, not legal advice, and does not replace advice from a qualified professional in each jurisdiction.
Sources
- USPTO, Do I need an attorney? (updated 21 August 2025)
- 37 CFR 2.11, Requirement for representation (84 FR 31510, 2 July 2019, as amended 2021), via Cornell LII
- USPTO, Basis (updated 3 March 2021)
- USPTO, Intent-to-use applications (updated 25 March 2026)
- USPTO, Keeping your registration alive
- WIPO, Form MM18, Declaration of intention to use the mark: United States (March 2026)
- WIPO Lex, Madrid Protocol contracting parties
- WIPO Lex, Madrid Protocol as amended on 12 November 2007 (Article 6(3), five-year dependency)
- Andean Community, Decision 486, Common Industrial Property Regime (14 September 2000)
- Brazil, Law 9.279 of 14 May 1996 (Industrial Property Law)
