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New Rule Requires Foreign Companies and Persons to Be Represented by a U.S. Licensed Attorney in All Trademark Matters

Categories: Intellectual Property, Article

Foreign companies need us based representation in all trademark matters

The United States Patent and Trademark Office USPTO recently announced a significant rule change. Effective August 3, 2019, all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings must be represented by an attorney who is licensed to practice law in the United States.

Why the Rule Change?

This new rule came about because the USPTO says it “discovered an increasing number of foreign trademark applicants, registrants, and parties … filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law or the USPTO’s rules." Moreover, it says these submissions were often “made with the assistance of foreign individuals or entities not authorized to represent applicants at the USPTO".

The rule is intended to improve the accuracy of trademark submissions to the USPTO, safeguard the integrity of the U.S. trademark register, and increase compliance with U.S. trademark laws and regulations. A significant number of countries around the world, the USPTO says, already require foreign-domiciled applicants and registrants to be represented by local attorneys as a condition for filing there.

Who Does This New Rule Effect?

This new rule affects all trademark applicants, registrants, and parties to Board proceedings whose permanent legal residence or principal place of business is outside the United States or its territories. These applicants, registrants, and parties will now be required to have a U.S. licensed attorney represent them at the USPTO in all trademark matters.

It also affects Canadian patent agents and Canadian trademark agents and attorneys. Canadian patent agents will no longer be authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in trademark matters. Meanwhile, Canadian trademark attorneys and agents will be recognized as “additionally appointed practitioners” if eligible, but the USPTO will only correspond with the appointed U.S. licensed attorney.

What About Trademark Filings and Matters Predating This New Rule?

In cases where someone other than a U.S. licensed attorney filed a trademark application, application-related submission or registration-related submission with the USPTO before August 3, 2019, they will be accepted (if they were otherwise acceptable). If the USPTO issued an office action before the effective date of this rule, however, those applicants and registrants will need to appoint a U.S. licensed attorney to represent them if they respond after August 3, 2019.

For already begun Trademark Trial and Appeal Board proceedings, the Board will suspend those proceedings and issue an order requiring any foreign-domiciled parties participating in them to appoint a U.S. licensed attorney to represent them going forward.

Requirements for U.S. Licensed Attorneys

Starting August 3, 2019, U.S. licensed attorneys representing anyone before the USPTO in trademark matters must attest to their active membership in good standing of a bar of the highest court of any U.S. state, commonwealth, or territory and must provide their bar membership information.


About the Author: Michael B. Dvoren is a partner and intellectual property attorney at Jaburg Wilk, where he assists clients with various intellectual property matters, including protection, enforcement, litigation and transactions. He has successfully registered hundreds of trademarks and can assist clients in all areas of trademark law, including any trademark matters before the USPTO.