New Trademark Registration Rule Requires Foreign Applicants to Retain U.S.-Licensed Attorneys

Effective Aug. 3, U.S. joins long list of nations that require local counsel

In recent years, the U.S. Patent and Trademark Office has been dealing what it calls “an increasing number of foreign trademark applicants, registrants, and parties … filing inaccurate and possibly fraudulent submissions … that do not comply with U.S. trademark law or the USPTO’s rules.” To address this concern, USPTO has initiated a new rule for filing which requires all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented at by an attorney who is licensed to practice law in the United States.

The goal of the new rule is to:

  • Increase USPTO customer compliance with U.S. trademark law and USPTO regulations.
  • Improve the accuracy of trademark submissions to the USPTO.
  • Safeguard the integrity of the U.S. trademark register.

The new rule is not meant to disparage foreign applicants or their representatives. On the contrary, USPTO wants to ensure that the vast majority of those applicants who are legitimate get knowledgeable assistance that improves their chances of successful registration. Nor is this rule a departure from international norms: “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.”

Are you affected by the new rule?

The rule applies to your application if you are considered “foreign-domiciled.” This means the trademark applicant, registrant, or party to TTAB proceeding is:

  • An individual with a permanent legal residence outside the United States or its territories
  • An entity with its principal place of business (headquarters) outside the United States or its territories.

If you qualify as either or both of the above, you will need a U.S.-licensed attorney to file on your behalf for:

  • The Trademark Electronic Application System (TEAS) Plus application form
  • All application-related and registration-related TEAS submissions.
  • Submissions made on paper or made using the Trademark Trial and Appeal Board’s Electronic System for Trademark Trial and Appeals (ESTTA) are subject to the same requirements.

If you are a foreign-domiciled applicant using the Madrid Protocol to file under Trademark Act Section 66(a), there is currently no ability to designate an attorney on the forms for the International Bureau of the World Intellectual Property Organization. But, you must be represented by a U.S.-licensed attorney if you receive a provisional refusal (i.e., office action).

If you have already filed your application before August 3, 2019, when the rule goes into effect, your submission can go through to approval provided there are no issues with your application. But, if you receive an office action, and you cannot respond until the rule is in effect, you must appoint a U.S.-licensed attorney to represent you in the proceeding.

Requirements for U.S.-licensed attorneys

Not every lawyer practicing in the United States or its territories is qualified to perform these services. The attorney you choose must demonstrate “active membership in good standing of a bar of the highest court of a U.S. state, commonwealth, or territory.” Our attorneys meet this qualification and have a wealth of knowledge on the U.S. trademark process. We assist U.S. trademark registrants from all over the globe. We are ready to assist you or your company. Contact us today.