NEWSFLASH: ONLY U.S. TRADEMARK LAWYERS ALLOWED UNDER KEY NEW RULE

In one of the most significant U.S. trademark rule changes ever issued, on July 2, 2019, the United States Patent and Trademark Office (the “USPTO”) announced that foreign businesses may no longer file new trademark applications by themselves or through their non-U.S. counsel. Instead, all such foreign applicants shall be required to engage U.S. trademark lawyers in order to file new trademark applications, to communicate with the USPTO on Office Actions, and to engage in all other trademark proceedings before the USPTO.1

This fundamental change in the USPTO rules will take effect as of August 3, 2019. Currently, foreign businesses are permitted to file trademark applications and take part in trademark prosecution proceedings on their own or with their non-U.S. attorneys. This new rule as
enacted due to the “[i]ncreasing problem of foreign trademark applicants who purportedly are pro se… and who are filing inaccurate and possibly fraudulent submissions that violate the Trademark Act and/or the USPTO’s rules.”

The USPTO sees these instances as a threat to “the accuracy and integrity of the U.S. trademark register and its utility as a means for the public to reliably determine whether a chosen mark is available for use or registration” and “a significant burden on the trademark
examining operation.” In support of the rule change, the USPTO delivered an extensive analysis describing existing mechanisms as inadequate to combat the increase of inaccurate and fraudulent submissions.

Currently, the only exception to the new U.S. attorney requirement is a small subset of trademark applications filed as “Madrid Applications” under the Madrid Protocol. Because Madrid Applications are initially filed with the International Bureau (“IB”) of the World intellectual Property Organization and then subsequently transmitted to the USPTO, the USPTO will waive the U.S. lawyer requirement for Madrid Applications.

SLG’s U.S. licensed trademark lawyers have many years of experience handling trademark applications, from filing to registration, and have a deep understanding of U.S. proceedings under the Madrid Protocol. For more information regarding this landmark trademark rule change or any other trademark-related issues, please contact Mitchell C. Shelowitz, Managing Partner, Shelowitz Law Group, [email protected]

 

1 https://www.federalregister.gov/documents/2019/07/02/2019-14087/requirement-of-us-licensedattorney-for-foreign-trademark-applicants-and-registrants