USPTO Requires Foreign Parties to have US Licensed Attorney for US Trademarks
August 14, 2019
Effective August 3, 2019, the United States Patent & Trademark Office (“USPTO”) has implemented a rule whereby foreign-domiciled applicants, registrants and parties must be represented by a US licensed attorney in connection with their US trademarks. This rule covers the filing of trademark applications, responses to office actions, as well as other proceedings before the USPTO and before the Trademark Trial and Appeal Board (“TTAB”).
This requirement also applies to all Canadian applicants, registrants, and parties. Canadian patent agents are no longer authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in trademark matters.
The rule is intended to increase USPTO customer compliance with US trademark law and USPTO regulations, improve the accuracy of trademark submissions to the USPTO, and to safeguard the integrity of the US trademark register. The USPTO discovered an increasing number of foreign trademark applicants, registrants, and parties are filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with US trademark law or USPTO rules. Many countries already require local attorneys to represent applicants. A significant number of trademark offices around the world require foreign-domiciled applicants and registrants to obtain local counsel as a condition for filing papers with those trademark offices.
If someone other than a US licensed attorney filed an application, application-related, or registration-related submission with the USPTO before the effective date of this rule, and the submission is otherwise acceptable, then the submission will be accepted. But if the USPTO issued an office action before the effective date of this rule, the foreign domiciled party will need to appoint a US licensed attorney if the response is made after the effective date of this rule. For foreign-domiciled parties who are not represented by a US licensed attorney, the TTAB will suspend the proceeding and issue an order requiring representation by a US licensed attorney.
For foreign-domiciled applicants who are filing trademark applications using the Madrid Protocol, the requirement for a US licensed attorney will be made in all office actions. Applicants via the Madrid Protocol may file their initial application with the International Bureau of the World Intellectual Property Organization. The International Bureau transmits that application to the USPTO.
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