The United States Patent and Trademark Office (USPTO) now requires foreign trademark filers to be represented by licensed U.S. attorneys—a new rule that takes effect on August 3, 2019.
New trademark applications submitted to the USPTO on or after August 3, 2019, must be submitted by a licensed U.S. attorney if the applicant qualifies as “foreign-domiciled” in the eyes of the USPTO. Applications submitted before August 3rd do not need to meet this requirement if the office finds them otherwise acceptable.
However, if the USPTO issues an office action after the new rule takes effect, such as identifying some legal problem or issue with an application that must be resolved before the USPTO can register a trademark, the foreign applicant can only respond to the office action through the medium of a licensed U.S. attorney.
The new USPTO rule applies to “foreign-domiciled” applicants, registrants, and parties—meaning individuals with a permanent legal residence outside the U.S. and businesses with a foreign headquarters. Any U.S. attorneys designated to represent foreign applicants, moreover, must be able to confirm they are active members (in good standing) of a bar of the highest court of a U.S. state, territory, or commonwealth.
Why the change? According to the USPTO final rule, the office has been dealing with an increase in trademark applications from foreign applicants for several years (26% of all trademark applications in 2017, up from 19% in 2015).
Additionally, the USPTO has seen a significant increase in foreign trademark filers that claim they have no legal representation, as well as foreign applicants filing fraudulent applications “with the assistance,” the USPTO claims, “of foreign individuals and entities who are not authorized to represent trademark applicants before the USPTO.”
Although the USPTO final rule is silent on the details, many observers believe the USPTO is mainly responding to an uptick in questionable foreign trademark applications from Chinese companies and Chinese citizens.
More broadly, the USPTO believes requiring foreign filers to hire a licensed U.S. attorney merely opens an official channel the office needs to perform its function, and the change will help ensure that the office only deals, from here on out, with individuals well-versed in the details of USPTO regulations and U.S. law.
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