Sep 12 | 2019

U.S. Patent and Trademark Office Adopts New Requirements for Foreign Trademark Applicants

Trademark applicants residing outside of the U.S. now need to use a U.S. attorney for all United States Patent and Trademark Office (USPTO) trademark filings and Trademark Trial and Appeal Board (TTAB) proceedings.  Effective Aug. 3, 2019, the rule (previously blogged about here) is meant to increase compliance with U.S. regulations and cut down on abusive filing practices from China and elsewhere. 

Now, if a foreign trademark applicant files a trademark application, post-registration maintenance filing, or TTAB proceeding without a U.S.-licensed attorney on record, the USPTO will issue an Office action or TTAB Order requiring the party to retain U.S. counsel.  Foreign applicants who filed before August 3, 2019 will have to add U.S. counsel when the next filing is due.  

The exception to this rule is an International Registration designating the U.S. under the Madrid Protocol.  WIPO (the organization that manages the Madrid filing system) currently has no mechanism to allow a Madrid applicant to appoint a local attorney, so the USPTO will not require designation of a U.S. attorney before registration unless the Madrid applicant received an Office Action unrelated to the U.S. attorney requirement, in which case a U.S. attorney must be appointed.

Under the new rule, the U.S. attorney of record – the primary contact for an application – must confirm he or she is an active member in good standing with their state bar and provide his or her bar information.   Other appointed attorneys at the same law firm do not need to provide their bar information.  As noted in our earlier blogging of this issue, the USPTO hopes that the active involvement of U.S. counsel will better ensure that trademark applications contain accurate statements regarding use of the mark, because failure to do so could subject U.S. counsel to disciplinary action by the USPTO, other federal agencies, and/or the state where the attorney is licensed.  

The rule limits the scope of what our friends north of the border can do.  Before August 3rd, Canadian trademark attorneys and agents could be recognized as appointed practitioners to represent their Canadian clients at the USPTO, and in this role they could prepare and file trademark applications, pre-registration filings such as Statements of Use, and post-registration filings.  After August 3rd, Canadian trademark attorneys and agents can continue to be recognized as appointed practitioners for Canadian clients and can file trademark applications and prepare other submissions for filing, but now all filings following the initial application must be submitted by a U.S. attorney who also must be the correspondent of record. 

Canadian patent attorneys and agents were permitted to handle U.S. trademark filings under the old rule, but now the USPTO will not recognize Canadian patent professionals for any trademark matter other than completing prosecution of an application or post-registration maintenance filing they were handling.