Fildes & Outland, P.C.

New Trademark Rule Regarding Representation For Foreign-Domiciled Individuals/Entities

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Effective August 3, 2019, the USPTO will require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (TTAB) proceedings whose domicile is not located within the U.S. or its territories, including Canadian trademark filers, to be represented by an attorney who is licensed to practice law in the United States.  A foreign-domiciled applicant/registrant/party is defined as a natural person whose permanent legal place of residence or an entity whose principal place of business (headquarters) is located outside of the U.S. or its territories.

Thus, for example, if a trademark application is filed by a foreign domiciliary without representation by a U.S. attorney, the applicant will be informed in an Office action that appointment of a qualified U.S. attorney is required.  Failure to comply will result in abandonment of the application.

For currently pending applications filed without a U.S. attorney, if there is an outstanding Office Action issued before the effective date of the rule, any response filed after the effective date of the rule must include the appointment of a U.S. attorney.  And for pending TTAB proceedings, in the case that a party is not represented by a U.S. attorney, the proceeding will be suspended and an order will be issued requiring appointment of a U.S. attorney.

Regarding the reciprocal recognition of Canadian attorneys before the USPTO, after the effective date of this rule, Canadian patent agents will no longer be authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in trademark matters.  Canadian trademark attorneys and agents will be recognized as an additionally appointed practitioner for a Canadian trademark applicant, registrant, or party, but a U.S.-licensed attorney must be appointed to file formal responses, and the USPTO will only correspond with the appointed U.S. attorney.

U.S.-licensed attorneys will be required to provide the following information for submissions made after the effective date of the rule: name, postal address, email address, a statement attesting to active membership in good standing of a bar of the highest court of a U.S. state, commonwealth, or territory, and information concerning the bar membership (i.e., state, bar license number if applicable, and year of admission).  The attorney bar information will not be made publicly available.

The USPTO has indicated that it is implementing the new rule in response to the increasing problem of foreign trademark applicants who purportedly are pro se and who are filing inaccurate and possibly fraudulent submissions that violate the trademark laws and/or the USPTO’s rules, such as improper or inaccurate specimens and statements of use.  The USPTO believes that the new rule will improve the integrity of the U.S. trademark register and will lead to better compliance with U.S. statutory and regulatory requirements.  The USPTO has also noted that the new rule is similar to the requirement that currently exists in many other countries.

A copy of the Federal Register Notice may be accessed at https://www.govinfo.gov/content/pkg/FR-2019-07-02/pdf/2019-14087.pdf.


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