Can foreign applicants file US trademark applications without a US trademark 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 or prosecute 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. Office Actions will also require a US attorney for response. 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.

What does domicile mean?

For an individual, the domicile address is the place the person resides and intends to be the person’s home.

For an entity (aka juristic person), domicile means the principal place of business of the company [see 37 CFR 2.2(o)]. The principal place of business is the location of a company’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled [37 CFR 2.2(p)].

Who is a foreign trademark applicant?

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.

Should a foreign applicant use a US trademark attorney?

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.

While any US-licensed attorney may assist foreign clients in trademark filings before the USPTO, foreign applicants should seek out IP attorneys who are experienced in trademark law. An experienced US trademark attorney should be familiar with both trademark prosecution (trademark filings) as well as trademark cancellations and oppositions. 

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.

Are foreign trademark owners required to use US attorneys in 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 patent and trademark attorney licensed in the US, 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 patent agent a licensed attorney?

No, a patent agent is not a licensed attorney. A US patent agent has the authority to prosecute only patent applications on behalf of others and to represent others in patent application matters before the USPTO. A patent agent cannot represent others in trademark applications and TTAB trademark cases. A patent agent also cannot litigate in court.

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.

Keep in mind that your US attorney need not be a patent attorney in order to represent you in trademark matters before the USPTO. The benefit of using patent attorneys is that they may represent you in both patent and trademark filings before the USPTO.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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