The U.S. Patent and Trademark Office (USPTO) recently finalized a rule requiring foreign-domiciled applicants and registrants to have a U.S.-licensed attorney. The new local counsel requirement aims to slow the uptick in questionable foreign trademark applications. According to the USPTO, it discovered an increasing number of foreign trademark applicants, registrants, and parties are filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law or the USPTO’s rules.

In further support of its new rule, the USPTO noted that other countries worldwide have had similar requirements for decades. It also believes that requiring representation by U.S.-licensed attorneys will help improve the quality of submissions to the USPTO.

“Businesses rely on the U.S. trademark register to make important legal decisions about their brands. 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,” Director of the USPTO Andrei Iancu said in a press statement. “This rule is a significant step in combatting fraudulent submissions.”

Importance of Accurate Trademark Register

A trademark search is often the first step in protecting a trademark. Accordingly, an accurate trademark register is essential to determining whether a chosen mark is available for use or registration. As highlighted by the USPTO:

When a person's search of the register discloses a potentially confusingly similar mark, that person may incur a variety of resulting costs and burdens, such as those associated with investigating the actual use of the disclosed mark to assess any conflict, initiating proceedings to cancel the registration or oppose the application of the disclosed mark, engaging in civil litigation to resolve a dispute over the mark, or choosing a different mark and changing business plans regarding its mark. In addition, such persons may incur costs and burdens unnecessarily if the disclosed registered mark is not actually in use in U.S. commerce, or is not in use in commerce in connection with all the goods/services identified in the registration.

The USPTO has experienced a surge in foreign trademark applications in recent years. While many are legitimate, others, particularly many from Chinese applicants, have been fraudulent. In fact, the USPTO estimates that the number of total tainted applications is now in the tens of thousands. According to the USPTO, foreign applicants file applications claiming use of a mark in commerce, but frequently support the use claim with mocked-up or digitally altered specimens to falsely substantiate a claim of use.

New US Trademark Attorney Requirement

The new local counsel requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These entities are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters. In addition, U.S.-licensed attorneys representing trademark filers must provide all of the following:

  • Their name, postal address, and email address
  • A statement attesting to their active membership in good standing of a bar of the highest court of a U.S. state, commonwealth, or territory
  • Information concerning their bar membership (state, number if applicable, and year of admission).

Under these new rules, when the USPTO receives a trademark application filed by a foreign domiciliary that does not comply with the requirements of the new rule the applicant is informed in an Office action that appointment of a qualified U.S. attorney is required. The applicant will have the current usual period of six months to respond to an Office action including the counsel requirement, and failure to comply will result in abandonment of the application.

At Scarinci Hollenbeck, our Intellectual Property attorneys routinely clear trademarks domestically and abroad, register the marks, maintain them, and work with clients to ensure they remain protected and enforced.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.