New USPTO rule requires U.S.- licensed attorneys
Beginning August 3, 2019, all foreign-domiciled trademark applicants, registrants and parties to Trademark Trial and Appeal Board (TTAB) proceedings must be represented by an attorney who is licensed to practice in the United States, according to the final rule recently issued by the United States Patent and Trademark Office (USPTO). This means that all new applications, renewal filings and TTAB disputes filed on behalf of any foreign entity or individual must be filed by a U.S.-licensed attorney. For purposes of this final rule, “foreign-domiciled” means either an individual with a permanent legal residence outside of the United States or its territories, and/or an entity headquartered outside the United States or its territories.
The USPTO has made this rule change to address a growing number of filings from foreign pro se parties that are either inaccurate or even fraudulent and that do not comply with U.S. trademark law or the USPTO’s rules. The USPTO hopes that this final rule will increase USPTO customer compliance with U.S. trademark law and USPTO regulations, improve the accuracy of trademark submissions, and safeguard the integrity of the U.S. trademark register.
In the short term, this final rule might be seen by international entities and individuals outside of the U.S. as an inconvenience or an unnecessary added expense. Assuming the rule accomplishes the USPTO’s stated goals of tightening compliance with U.S. trademark law and USPTO rules, and reducing fraudulent documents and applications submitted to the USPTO, however, the final rule could reduce costs for applicants across the board by eliminating the need for applicants to challenge fraudulent registrations or respond to likelihood of confusion refusals based on fraudulent applications and registrations. By implementing this rule, the USPTO could make the trademark system more efficient, more reliable, and more consistent, which will have the ultimate effect of helping everyone who uses or relies on the USPTO.
Note that this requirement of a U.S.-licensed attorney does not apply to the filing of Madrid applications through the World Intellectual Property Organization. For Madrid applications submitted with all formalities and statutory requirements already satisfied and in condition for publication, the USPTO will waive the requirement until the Madrid system is updated to allow for the designation of a US-licensed attorney. In the event of an office action on a Madrid application, a U.S.-licensed attorney will still need to be retained, as usual.
As the law continues to evolve on these matters, please note that this article is current as of date and time of publication and may not reflect subsequent developments. The content and interpretation of the issues addressed herein is subject to change. Cole Schotz P.C. disclaims any and all liability with respect to actions taken or not taken based on any or all of the contents of this publication to the fullest extent permitted by law. This is for general informational purposes and does not constitute legal advice or create an attorney-client relationship. Do not act or refrain from acting upon the information contained in this publication without obtaining legal, financial and tax advice. For further information, please do not hesitate to reach out to your firm contact or to any of the attorneys listed in this publication.
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