The United States Patent and Trademark Office (USPTO) recently amended its rules of trademark practice to require all foreign applicants, registrants, and parties  – including those in Canada – to be represented by a qualified U.S. attorney in connection with any trademark filing with the USPTO.  This includes filings in the Trademark Trial and Appeal Board (TTAB).  A foreign applicant, registrant, or party is any individual or entity whose domicile or principal place of business is located outside the U.S. or its territories.  The effective date of this rule change is August 3, 2019.

Historically, a foreign applicant, registrant, or party could make a trademark related filing either pro se or with foreign representation.  However, as a result of these rule changes, any foreign-domiciled trademark applicant, registrant, or party will be required to be both represented by a U.S. attorney and to use that attorney to file their trademark related submissions in the USPTO.

Are You “Foreign-Domiciled”?

A foreign-domiciled trademark applicant, registrant, or party is:

  • An individual with a permanent legal residence outside the U.S. or its territories; or
  • An entity with its principal place of business outside the U.S. or its territories.

What Types of Trademark Filings Does This Affect?

The new rules apply to all trademark submissions in the USPTO, including:

  • New trademark applications (except for Madrid Protocol applications)
  • Office Action responses in pending trademark applications, including responses to USPTO-issued Office Actions in Madrid Protocol applications
  • Renewal applications for trademarks already registered
  • All filings in new and ongoing TTAB proceedings (opposition and cancellation proceedings)
  • Petitions to the Director of the USPTO related to trademark matters

What is the Purpose of the New Rules?

The rule changes are primarily intended to reduce the number of incorrect or fraudulent trademark filings with the USPTO.  According to the USPTO, there has been a rapid increase in the number of foreign trademark filings without U.S. representation in recent years.  With such filings, the USPTO believes foreign applicants, registrants, and parties are more likely to be unfamiliar with U.S. trademark laws and USPTO rules, regulations, requirements, and proceedings, thereby leading to trademark filings with errors that require more involvement by trademark examining attorneys, and by judges and case managers in TTAB proceedings.

For example, the U.S. has stringent use in commerce requirements for registering a trademark. The requirement to prove use in commerce with a proper specimen is typically more stringent than in other countries.  Thus, foreign applicants have been more likely to submit applications with improper claims of use in commerce and/or improper specimens when attempting to register their marks in the U.S.  These errors increase the backlog for trademark examiners, which increases the waiting time for other applicants seeking registrations of their own trademarks.  By requiring representation by qualified U.S. attorneys, the USPTO believes it can more efficiently and thoroughly examine applications, renewals, and TTAB filings from foreign entities.

Do You Need U.S. Trademark Representation?

With the new rules in place as of August 3, 2019, the use of U.S. attorneys familiar with the USPTO’s trademark system and rules is not only an advantage, it is a requirement. At Luedeka Neely, we specialize in intellectual property legal services including trademark applications, renewals, and TTAB proceedings before the USPTO.  Whether you are an individual, a start-up, or a well-established business, you can trust our attorneys to assist you in securing and maintaining U.S. trademark protection for your brand.

If you are a foreign applicant, registrant, or party to a TTAB proceeding, and you believe this new rule may affect you, please contact one of our attorneys to learn more about our service offerings and experience.

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