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August 2019

Foreign Parties Now Required to Retain U.S. Attorney for Trademark Filings

The United States Patent and Trademark Office (“USPTO”) has changed its rules regarding filings by foreign individuals and companies. Effective August 3, 2019, all foreign domiciled parties must be represented by a U.S. licensed attorney in connection with trademark-related submissions to the USPTO. 

This requirement applies to applications and registrations as well as proceedings before the Trademark Trial and Appeal Board (“TTAB”). Any individual with a permanent legal residence outside the United States or entity with its principal place of business outside the United States now needs a U.S. licensed attorney to file documents with the USPTO on their behalf. Even Canadian trademark attorneys and agents that were previously allowed to submit documents to the USPTO will be impacted by this rule change. Though Canadian trademark attorneys and agents who are reciprocally recognized by the USPTO’s Office of Enrollment and Discipline can still be listed as “additionally appointed practitioners,” their clients must also appoint a U.S. licensed attorney who will serve as the primary point of contact with the USPTO.

The USPTO adopted this rule in response to an increasing number of foreign parties filing inaccurate and fraudulent submissions that did not comply with U.S. law or USPTO rules. The rule is intended to help maintain the integrity of the U.S. trademark register and help the USPTO ensure compliance with relevant laws and regulations.

All foreign domiciled parties who wish to file new trademark or service mark applications in the United States, except for international applications filed through the World Intellectual Property Organization using the Madrid Protocol, will need to retain a U.S. attorney to file those new applications. Applications filed prior to the effective date of this rule will remain valid, but a U.S. attorney must be appointed for any future filings – such as Office Action responses or Statements of Use. Similarly, maintenance filings for registrations issued prior to August 3 must also be submitted by a U.S. attorney. The TTAB will suspend all pending proceedings involving foreign parties not represented by U.S. attorneys and issue orders requiring representation by a U.S. attorney.

For more information, please contact your CSG attorney or the author below.

Abigail J. Remore | Counsel | ajremore@csglaw.com | (973) 530-2114

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