Client Alert: New USPTO Trademark Rule Requiring Foreign Applicants and Registrants to have a US-Licensed Attorney Now in Effect

The United States Patent and Trademark Office (USPTO) is now requiring that all foreign-domiciled trademark applicants, registrants, parties to Trademark Trial and Appeal Board (TTAB) proceedings be represented by an attorney who is licensed to practice law in the United States. This requirement applies to all application and registration-related Trademark Electronic Application System (TEAS)submissions. It also applies to submissions made using the Trademark Trial and Appeal Board’s Electronic System for Trademark Trial and Appeals (ESTTA). The USPTO has discovered that an increasing number of foreign trademark applicants,registrants and parties have been filing inaccurate and possibly fraudulent submissions that do not comply with US trademark law or USPTO rules. It has thus implemented the change in order to improve accountability and to maintain the accuracy and integrity of the register for the benefit of all of its users.

     An applicant, registrant or party is considered “foreign-domiciled” if it is an individual with a permanent legal residence outside of the United States or an entity with its principal place of business outside the US or its territories.Any submission made by these individuals or entities before August 3, 2019,which is the date when the rule went into effect, will be accepted. However, if the USPTO issued an office action before the effective date, they must appoint a US-licensed attorney to respond after the effective date. Foreign-domiciled parties with pending TTAB proceedings who are not represented by US-licensed attorneys will have those proceedings suspended till they procure a US-licensed attorney to represent them.

     Canadian trademark attorneys and agents are also affected by the rule. Those who have filed a submission with the USPTO on behalf of Canadian clients before the effective date of the rule will generally have their submissions accepted.Those who have filed after the effective date and are reciprocally recognized by the Office of Enrollment Discipline will be recognized as an additionally appointed practitioner for their Canadian clients but these clients must also appoint a US-licensed attorney to file formal responses. The USPTO will then correspond only with the US-licensed attorney for the Canadian trademark applicant, registrant, or party.

     Please feel free to contact us if you would like additional information regarding this rule or if you require new legal representation following its implementation. Winterfeldt IP Group offers a creative, holistic and integrated solution for all brand protection needs with a client-centric concierge approach. We have an expansive global network with unparalleled brand management expertise across brick and mortar as well as digital spaces.  We manage all aspects of brand presence from trademark portfolios to digital assets, such as domain names and social media.

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