Trademark Office U.S.-Licensed Attorney Requirement

Michael S. RobertsPartner, RM Partners Law LLC

The United States Patent and Trademark Office recently announced a change for all foreign-domiciled trademark applicants to “increase the accuracy of the trademark submissions” and “combat fraudulent submissions.” Effective August 3, 2019, all individuals or corporate entities with a permanent legal residence or principal place of business outside of the United States (or its territories) will be required to be represented by a U.S.-licensed attorney[1] before all trademark matters in the United States Patent and Trademark Office (“USPTO”) and Trademark Trial and Appeal Board (“TTAB”).

What does this mean for foreign-domiciled parties?

  • All trademark applications filed after August 3, 2019, will require a U.S.-licensed attorney to be appointed.  Foreign counsel and ‘pro se’ applications will not be accepted. 
  • All trademark applications filed before August 3, 2019, will not need a U.S.-licensed attorney if the application matures to registration without any additional filings.  However, any additional filings, such as Statements of Use or Responses to Office Actions will require a U.S.-licensed attorney to be appointed.
  • All proceedings before the TTAB will require a U.S.-licensed attorney after August 3, 2019.  Current proceedings before the TTAB will be suspended after August 3, 2019, until a U.S.-licensed attorney is appointed.
  • Applications filed under §66(a) with the Madrid Protocol will be given provisional refusals based upon the need for a U.S.-licensed attorney.  A qualifying attorney must be appointed within six-months from the date the USPTO sends the provisional refusal to the International Bureau.

Special Cases for Canadian Patent Agents and Trademark Attorneys

  • Canadian Patent Agents will no longer be permitted to represent Canadian parties in any trademark matter after August 3, 2019. 
  • For trademarks filed before August 3, 2019, Canadian Patent Agents will be permitted to represent Canadian parties for applications and post-Registration maintenance if they are registered to practice before the USPTO and continue to be in good standing in Canada.  
  • Canadian trademark attorneys will be permitted to represent Canadian parties in any trademark matter only if they are registered to practice before the USPTO and a U.S.-licensed attorney is also appointed. 

These new rules highlight how crucial it will be for foreign-domiciled parties to seek out and retain counsel in the United States to ensure all their trademarks are protected.  Attorneys from RM Partners Law are available to further discuss the specifics of your international trademark needs as well as other matters related to branding, copyrights, licensing, website domains, social media, and other online matters.

The information in this article is for informational purposes only and does not constitute formal, legal advice. Consult with one of the attorneys from RM Partners Law for advice about your specific international trademark protection and strategy.

[1] A U.S.-licensed attorney is an active member in good standing of the bar of a U.S. State, territory, commonwealth, or the District of Columbia. 

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