USPTO to Require Foreign-Domiciled Trademark Applicants and Registrants to Engage a U.S.-Licensed Attorney

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If you are a foreign company or foreign attorney used to directly filing U.S. trademark applications from overseas, be prepared for a big change on Aug. 3. The United States Patent and Trademark Office (USPTO) has announced that, effective as of Aug. 3, 2019, all foreign-domiciled trademark applicants, registrants and parties to Trademark Trial and Appeal Board proceedings must be represented by a U.S-licensed attorney.

It has been widely reported that the USPTO has recently been inundated with thousands of applications for trademark registration filed by foreign-based applicants without U.S. legal representation. A significant proportion of these applications reportedly contain suspect and/or fraudulent information, resulting in extended application review periods and increasing delays for all other applicants.

As a result, the USPTO determined that the new requirement shall apply to all trademark applicants, registrants and parties whose permanent legal residence or principal place of business is outside the U.S. Secretary of commerce for intellectual property and director of the USPTO, Andrei Iancu, succinctly addressed the underlying motivation of the USPTO’s new rule by stating that “in order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants.”

Although the USPTO has not directly commented on the issue, much speculation has been made regarding the negative impact on the USPTO resulting from foreign government programs that provide financial incentives to persons receiving U.S. trademark registrations. These programs may be contributing to the flood of foreign and fraudulent applications. Because U.S.-licensed attorneys may be subjected to discipline for improper and fraudulent acts before the USPTO, it is hoped that the new requirement will contribute to the resolution of the situation.

The USPTO commissioner for trademarks, Mary Boney Denison, addressed the issue by saying “[m]any other countries worldwide have had this requirement for decades. We believe that this new rule will help improve the quality of submissions to the USPTO.”

This is an important material change for foreign persons and entities interested in acting before the USPTO or protecting their brand and trademark rights in the U.S. It is recommended that all such persons and entities discuss this matter and their overall intellectual property strategy with a U.S.-licensed trademark attorney.

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