What is the rule regarding USPTO trademark applications by foreign applicants and the need to have a US-licensed attorney?

Effective August 3, 2019, the USPTO will require all foreign applicants to be represented by an attorney licensed to practice law in the US in order to file a US trademark application. This rule regarding representation by a US-licensed attorney will also apply to foreign owners of US registered trademarks when it comes time to renew or otherwise maintain a US registered mark. Foreign trademark filers should promptly engage experienced IP attorneys licensed to practice law in the US especially if any trademark applications applications are pending before the USPTO.

Who are affected by this rule?

This rule applies to persons or companies who are foreign-domiciled. The USPTO defines a foreign-domiciled trademark applicant as:

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

Why have a new rule requiring foreign trademark filers to use US lawyers?

The filing of a US trademark application and the ongoing back-and-forth correspondence with the USPTO (e.g. Office Action responses) are considered the practice of law. In recent years, a growing number of US trademark applications have been filed by foreign entities using foreign agents who are not licensed to practice law in the US. This circumvents the US rules requiring only US-licensed attorneys to represent trademark applicants before the USPTO.

One of the goals of this rule is to improve the overall quality and integrity of US trademark filings. US attorneys have a duty not to promote any fraudulent statements or submissions made to the USPTO. The goal is that USPTO trademark submissions such as Statements of Use, specimens, and the like by foreign trademark filers will undergo greater scrutiny prior to filing.

Does this rule affect US trademark applications filed before August 3, 2019?

Yes, the new rule will apply to US trademark applications filed before August 3, 2019 if any further submissions will be required. For example, if a foreign trademark applicant needs to respond to an Office Action or submit a Statement of Use, the foreign filer must engage US counsel.

If a previously filed application requires no further action, then such application might proceed to registration without the need to engage US lawyers.

Does this rule apply to TTAB trademark oppositions and cancellations?

Yes, a foreign-domiciled party in a TTAB trademark opposition or cancellation will need to engage a US attorney.

What information must US-licensed attorneys submit in trademark filings?

US-licensed attorneys will be required to provide:

  • their name, postal address and email address;
  • a statement declaring their active membership in good standing of a bar of the highest court of a US state (e.g. Supreme Court of the State of California), commonwealth or territory; and
  • bar membership information (e.g., state bar numer and year of admission).

As a US-licensed attorney, here is my California state bar information.

Does this foreign-trademark-US-attorney rule apply to Madrid Protocol applications designating the US?

Yes, Madrid Protocol applicants who are not domiciled in the US will need to engage a US attorney to respond to an Office Action or file any further submissions with the USPTO.

Is a US patent agent a licensed attorney?

Most likely not. A US patent agent has the authority to prosecute patent applications on behalf of others and to represent others in patent application matters before the USPTO. A patent agent is not a licensed attorney.

Is a patent attorney a US-licensed attorney?

Yes, a patent attorney such as myself is licensed to practice law in the US. Therefore, a patent attorney may also represent foreign trademark owners in US trademark applications, as well as all applicants (foreign or domestic) in US patent applications.

 

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.

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