October 15, 2019

October 15, 2019

Subscribe to Latest Legal News and Analysis

October 14, 2019

Subscribe to Latest Legal News and Analysis

USPTO to Require US-Licensed Counsel for All Foreign-Domiciled Trademark Filers; New Rule Takes Effect Aug. 3

The US Patent and Trademark Office recently announced that starting on August 3, 2019, all foreign-domiciled trademark applicants, registrants and participants in USPTO trademark proceedings must be represented by US counsel. The change clearly stems from the USPTO’s desire to curb the recent surge of bad-faith filings and otherwise “maintain the accuracy and integrity of the trademark register.”

The USPTO’s rules previously required that only US-licensed attorneys (and a handful of excepted foreign attorneys) could represent trademark applicants before the Office. But in practice, many foreign attorneys and agents assisted applicants, which was tolerated under the rules as long as the applicant signed the filings and continued to proceed “pro se .” Now, US counsel must be identified at all stages of trademark prosecution for foreign-domiciled applicants, as well as all ongoing Trademark Trial and Appeal Board (TTAB) cases, with the end goal of making the U.S. trademark system more legitimate for all legitimate users, both foreign and domestic.

USPTO Director Andrei Iancu and Trademark Commissioner Mary Boney Denison have detailed the sharp increase in the number of bad-faith applications and other potentially fraudulent filings the USPTO has received in recent years. These filings include knowingly false claims, fake or altered specimens, inaccurate addresses and ownership, and practitioners who aren’t authorized to represent others before the USPTO. Even outside of those parties with possible malicious intent, the use-in-commerce and bona fide intent requirements of US trademark law suggest that local counsel should be required, as it is in many other countries.

Congress and the USPTO are continuing to weigh additional measures to increase the security and legitimacy of the trademark process, but in the meantime, the USPTO’s actions are a logical next step. The move was supported by the International Trademark Association and other industry groups, who believe that putting some of the responsibility in the highly-specialized U.S. trademark bar will weed out many bad actors and otherwise result in more accuracy in the long run.

The new rule was announced July 2, and its application is straightforward. Applicants, registrants, or parties to a trademark proceeding whose permanent address (for individuals) or principal place of business (for business entities) is not within the United States or its territories must be represented by an U.S.-barred attorney on all USPTO filings.

The rule applies to all filings after the August 3 effective date, including all new applications, Responses to Office Actions, and post-registration maintenance filings. In other words, even if an application was properly filed by a foreign-domiciled applicant, a U.S. attorney must handle subsequent filings from August 3 forward.

The rule does not apply to the initial Request for Extension of Protection to the U.S. under the Madrid Protocol, which does not allow domestic attorney designation at filing at present, but will apply to all subsequent responses to the USPTO on that application.

At the Trademark Trial and Appeal Board, cases involving foreign-domiciled parties who are not represented by a U.S.-licensed attorney will be suspended, and an order issued requiring the appointment of domestic attorney.

Copyright © 2019 Womble Bond Dickinson (US) LLP All Rights Reserved.

TRENDING LEGAL ANALYSIS


About this Author

Peter B. Bromaghim Intellectual Property Lawyer Womble Bond Dickinson Law Firm
Partner

Pete’s practice focuses on all aspects of trademark law, in addition to copyright, domain name, and related intellectual property matters. He has extensive experience in trademark selection, clearance, and portfolio strategies. He oversees the prosecution of trademark applications domestically and internationally, and heads up global enforcement matters involving many famous marks. He also handles many opposition and cancellation matters before the US Trademark Trial and Appeal Board, and assists with federal trademark litigation.

Pete also has substantial experience drafting...

310-207-3800