Effective August 3, 2019, the United States Patent and Trademark Office (USPTO) will require all foreign-domiciled applicants, registrants and parties to be represented by a U.S.-licensed attorney in USPTO trademark proceedings.
Who does the new rule affect?
This rule applies to all foreign-domiciled applicants, registrants and parties. This means that an individual with a permanent legal residence outside the United States or its territories and/or an entity with its principal place of business outside the United States or its territories will need to be represented by a U.S.-licensed attorney. This includes all pending applications, new applications, and renewal filings.
What is the rationale for the new rule?
The new rule is intended to increase compliance with U.S. trademark law and USPTO regulations, while simultaneously improving the accuracy of trademark submissions to the USPTO. The USPTO has found that several foreign trademark applicants who file pro se are actually filing inaccurate and possibly fraudulent submissions that do not comply with U.S. trademark law or the USPTO’s rules. Furthermore, these inaccurate submissions are often made with the assistance of foreign individuals or entities not authorized to represent applicants at the USPTO.
What does this mean in practice?
Starting August 3, 2019, the USPTO will require that a U.S.-licensed attorney file all new trademark filings. For pending applications filed prior to August 3, the USPTO will require that responses to Office Actions and Statements of Use filed after August 3 be filed by a U.S.-licensed attorney. In pending TTAB cases, the TTAB will suspend proceedings pending appointment of a U.S. attorney.
In particular, the new rule affects Canadian patent agents who will no longer be allowed to represent Canadian clients before the USPTO in trademark matters. The USPTO will recognize Canadian trademark attorneys and agents as additionally appointed practitioners before the USPTO, but a U.S.-licensed attorney will need to be appointed to file formal responses, as the USPTO will only communicate with an appointed U.S.-licensed attorney.
For international applications filed under the Madrid Protocol, until the Madrid Protocol system allows for the designation of a U.S.-licensed attorney, the requirement for a U.S.-licensed attorney will be waived up to publication. However, if a Madrid Protocol application does not comply with U.S. trademark law and USPTO rules, the USPTO will issue an Office Action, and a U.S.-licensed attorney will need to be appointed in order to respond to the Office Action.