What can cause the USPTO to issue trademark sanctions?

Imagine investing the time and expense of filing a US trademark application only to have it terminated by the USPTO. The unauthorized practice of law in filing US trademark applications can lead to such sanctions by the USPTO. This situation is more likely to arise with foreign firms representing non-US entities. The USPTO has been taking a tougher stance on such violations by imposing trademark sanctions which punish both the trademark filing and the person(s) assisting in the filing.

What is the unauthorized practice of law?

Anyone who is not a US-licensed attorney may not represent others in filing and prosecuting trademark applications with the USPTO. To represent an applicant is to file a trademark application on their behalf. Nowadays, nearly all trademark applications are filed online with the USPTO. So representing an applicant means submitting the online trademark application for the applicant. Often a non-attorney may be electronically signing the online trademark application and providing email and mailing addresses that belong to the non-attorney.

These practices are prohibited by the USPTO. Non-attorneys simply cannot represent others in trademark matters before the USPTO. These trademark matters extend beyond the initial filing and also include registration renewals, trademark cancellations and trademark oppositions.

Foreign trademark owners will need to hire US-licensed attorneys to file a US trademark application, unless a Madrid Protocol application has designated the US. Foreign applicants will also be required to engage US counsel in responding to Office Actions, even in Madrid-based applications under Section 66(a).

What are possible results of trademark sanctions?

Violations can lead to termination of trademark applications handled by non-lawyers. Furthermore, the USPTO may preclude foreign practitioners from further correspondence or submissions on trademark matters.

What should foreign associates do to avoid trademark sanctions?

Hire US-licensed attorneys to perform the following tasks:

Where can you find a list of disciplined practitioners?

Here are orders issued by the Commissioner for Trademarks which may pertain to non-lawyers. A list of USPTO disciplinary decisions including names of US lawyers can be found here.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com