Jul 29, 2019

New Requirements: Foreign Trademark Applicants and Registrants Must Use U.S. Licensed Attorneys

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Effective August 3, 2019, the U.S. Patent and Trademark Office (“PTO”) will require trademark applicants, registrants, or parties to a proceeding before the Trademark Trial and Appeal Board that are domiciled outside of the United States or its territories to be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia or any Commonwealth or territory of the U.S.).  See https://www.govinfo.gov/content/pkg/FR-2019-07-02/pdf/2019-14087.pdf.

The PTO’s new rule is intended to combat the recent, significant increase in fraudulent filings by foreign claimants, who fail to meet statutory requirements and/or make obvious misrepresentations in their trademark filings. For example, many of these claimants submit false, digitally altered specimens.

It is difficult to take action against the foreign entities making these fraudulent filings, and the standards for proving fraud before the PTO are extremely high. Critically, the PTO believes that many of these foreign applicants are being given inaccurate “advice” by people who are not authorized to give legal advice.

The PTO hopes that by requiring foreign trademark applicants and registrants to work with licensed U.S. attorneys, the public will have greater confidence that U.S. trademark registrations issued to foreign applicants are valid and enforceable.

Starting August 3, foreign trademark applicants who are filing for registration based on use in U.S. commerce (§1(a)), intent to use in U.S. commerce (§ 1(b)), or a foreign application/registration (§ 44) will have six months to obtain U.S. counsel.  In addition, if a trademark application filed before August 3 requires a response or documentation to the PTO (for example, to respond to an Office Action), the applicant will need to obtain U.S. counsel.

Notably, new trademark applications based on the extension of an international registration through the Madrid system (§ 66(a)) will not be affected by the new requirement.  However, if a Madrid applicant is required to submit a response or documentation to the PTO, U.S. counsel will be required.

The PTO’s requirement to use U.S. counsel is one of many new measures, including those recently enacted to “strengthen” declaration language, intended to deter fraudulent filings.

We currently represent clients from numerous countries before the PTO and encourage you to contact us directly with any questions.