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New USPTO Rule Requires a U.S.-Licensed Attorney’s Help with Trademark Matters

Important Note for International Businesses and Trademark Attorneys with Matters in the U.S. Patent and Trademark Office

On August 3, 2019, the United States Patent and Trademark Office (USPTO) adopted a rule requiring all foreign-domiciled applicants, registrants, or parties to a trademark proceeding to be represented by an attorney licensed to practice law in the United States.  See summary and final rule.  This rule applies to all trademark applicants, registrants, or parties whose permanent legal residence or principal place of business is outside the United States, and governs actions before both the USPTO and the U.S. Trademark Trial and Appeal Board.  For example, if a business domiciled in Canada wants to apply to register a trademark in the United States, a U.S. attorney must file that application rather than Canadian counsel.  The only exception is a Madrid application designating the U.S. does not require identification of a U.S. licensed attorney at the time of filing, but U.S. counsel will be required for prosecution and post-registration tasks.

The goal of the new rule is to ensure an accurate and reliable trademark register, according to the USPTO.  In the past few years, the USPTO reports seeing an increase in the number of foreign-domiciled trademark applicants not represented by counsel or represented by foreign parties not authorized to represent trademark applicants.  The USPTO believes there are a growing number of foreign applicants filing inaccurate and possibly fraudulent submissions that violate the Trademark Act or USPTO rules.  The USPTO anticipates that the requirement for representation by a qualified U.S. attorney will enhance the integrity of the U.S. trademark register, which will, in turn, benefit all those who rely upon the information reflected in the register.

With the new rule in place, you may require assistance from U.S. counsel. OWE is prepared to assist non-U.S. trademark applicants, businesses, and attorneys with representation in the USPTO. If you are unsure whether you need a U.S. licensed attorney, or have questions about your U.S. trademark needs, please email or call an attorney at OWE.  We would be happy to discuss your questions and concerns.

Contributed by Erin Clarke

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