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USPTO to Require Foreign Trademark Applicants and Registrants to Retain US Lawyers


January 7, 2019
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Under a New Rule Proposed by the USPTO, Foreign Trademark Applicants and Registrants Must Be Represented by a Licensed U.S. Attorney

Foreign trademark applicants and registratants must be represented by a licensed U.S. attorney under a new rule proposed by the U.S. Patent and Trademark Office. The rule would take effect in July.

USPTO to Require Foreign Trademark Applicants and Registrants to Retain US Lawyers
Photo courtesy of Marten Bjork (Unsplash.com)

USPTO Proposed Rule

Under the USPTO’s proposed trademark rule, foreign trademark applicants and registrants must be represented by an attorney in good standing of the bar of the highest court of a State in the U.S. (including the District of Columbia and any Commonwealth or territory of the U.S.) to file trademark documents with the USPTO.

According to the USPTO, a requirement that foreigners be represented by a U.S. licensed attorney will:

 (i) ensure that the USPTO can effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters; (ii) provide greater confidence to foreign applicants and the public that registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims; and (iii) aid USPTO efforts to improve accuracy of the U.S. Trademark Register.

In addition to the reasons detailed above, there is speculation that the new requirement is intended to deter the recent uptick in pro se trademark filings by Chinese citizens. The Chinese Government currently provides a subsidy of $790 for successful trademark applications, which provides a financial incentive to obtain trademark protection regardless of any sincere intention to commercialize such rights.

The formal rule is expected to include an exception for trademark applications filed under the Madrid Protocol, which makes it possible to register a mark in several territories through one procedure. The system is administered by the World Intellectual Property Organization (WIPO) and governed by two international treaties, the Madrid Agreement and the Madrid Protocol.

The USPTO plans to issue a Notice of Proposed Rulemaking sometime this month. The public comment period will end in February, with a final action next June that will become effective in July 2019.

Benefits of Being Represented by a Trademark Attorney

Both U.S. and foreign trademark applicants have a higher likelihood of success when retaining an experienced trademark attorney. As we have discussed in prior articles, trademark applications filed with assistance of an attorney have a far higher success rate, according to published studies.

The benefits of working with counsel include the option of performing limited or comprehensive trademark searches before you file your application; preparing your trademark application, including the appropriate description of your goods and services; corresponding with the Trademark Office’s examining attorney on your behalf, such as responding to preliminary refusals and requests for additional information; filing appeals when necessary; and assisting your business in maintaining and policing your trademark after registration.

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.

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.