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Foreign Trademark Applicants And Registrants Are Now Required To Be Represented By U.S. Attorneys

The U.S. Patent and Trademark Office (USPTO) published a new rule on July 2, 2019, requiring trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings whose domicile is not located within the United States or its territories to be represented before the USPTO by a U.S.-licensed attorney as of August 3, 2019. Domicile is typically defined as the permanent legal place of residence of an individual or the headquarters of an entity. The rule does not retroactively apply to applications filed before August 3, 2019, but impacts such applications if an office action is issued on or after August 3, 2019, requiring the applicant to designate a U.S.-licensed attorney to respond. This rule is intended to streamline trademark registrations and reduce the potential of invalidations by providing the USPTO a more efficient way to enforce statutory and regulatory requirements.

This rule limits the reciprocal rights of Canadian attorneys and agents that have previously had authority to appear before the USPTO. Canadian patent agents can no longer represent Canadian trademark applicants, registrants, or parties to trademark proceedings before the USPTO in trademark matters. Additionally, while Canadian attorneys and trademark agents can continue to represent their Canadian clients under the designation of additional appointed practitioners, the USPTO will only communicate with an appointed U.S.-licensed attorney.

There is no mechanism at this time to designate a U.S.-licensed attorney on applications to extend protection into the United States for international trademarks pursuant to the Madrid Protocol. Therefore, the USPTO may be more lenient in applying this rule to Madrid filings and allow the application to proceed, but will likely require a U.S.-licensed attorney to be designated if there is an office action relating to the Madrid filing.

The TTAB will suspend any proceedings where a foreign-domiciled party does not currently have a designated U.S.-licensed attorney. Thus, any foreign-domiciled trademark applicants, registrants, and parties to trademark proceedings should consider seeking counsel from a U.S.-licensed attorney sooner than later to avoid delays in the prosecution or maintenance of its U.S. trademarks.

© 2020 Mitchell Silberberg & Knupp LLPNational Law Review, Volume IX, Number 204


About this Author

Alesha M. Dominique Partner DC intellectual property entertainment IP litigation trademark prosecution litigation specialties video game

Alesha Dominique represents clients in intellectual property litigation, with an emphasis on patent, trademark, false advertising, and unfair competition matters.  Alesha’s experience includes representing clients before federal district courts, the U.S. International Trade Commission, the U.S. Court of Appeals for the Federal Circuit, and the Trademark Trial and Appeal Board. She also counsels clients on trademark clearance, prosecution, and enforcement matters.

representative matters

  • Represented a multinational retail corporation in trademark infringement case;...

(202) 355-7925
Dima S. Budron Associate DC MSK intellectual property motion picture, television & music transactions

Dima S. Budron is an Associate in the Washington, D.C. office. She focuses her practice on intellectual property and transactional entertainment law, representing artists, production companies, networks, studios, trade associations, and talent and content creators. Dima has experience drafting, negotiating, and reviewing contracts dealing with various stages of content creation such as funding, development, production, licensing and distribution. She also provides legal analysis and counseling on copyright and trademark matters.

representative matters

  • Drafts, negotiates, and reviews music producer agreements, recording artist agreements, motion picture/TV talent agreements, life story rights agreements, book options, writer agreements, funding agreements, development agreements, production services agreements, season renewal agreements, and content licensing agreements for various clients,

  • Assists clients in obtaining rights to use music in audiovisual and/or music productions.

  • Provides clients with legal opinion on the use of titles for movies or television shows.

  • Serves as counsel to International Intellectual Property Alliance (a coalition of five copyright-based industry trade associations – RIAA, MPAA, ESA, AAP, and IFTA – comprised of over 3,200 companies in the music, film, book publishing, and entertainment software industries) on international copyright protection and enforcement matters including drafting important government filings such as the annual Special 301 report and several of the United States Trade Representative’s Out-of-Cycle Reviews.

  • Assist in administrative litigation before the Copyright Royalty Board regarding royalty distribution for cable re-transmissions, representing the copyright owners of syndicated series, movies, and specials broadcast.

  • Assisted in counseling major studio client on theatrical and television rights upon review of documents surrounding prior film productions.

  • Represented the Motion Picture Association of America (MPAA), the Recording Industry Association of America (RIAA), the Entertainment Software Association (ESA), and the Association of American Publishers (AAP) in the 2018 Copyright Office rule-making proceeding regarding proposed exemptions to an anti-circumvention provision of Section 1201 of the Digital Millennium Copyright Act.