It’s Official: Foreign Trademark Applicants Will Need a U.S. Attorney

On July 2, the United States Patent and Trademark Office (“USPTO”) published a final rule in the Federal Register requiring all non-U.S. individuals and businesses seeking a trademark registration be represented by a U.S. attorney.  See our earlier posts here and here. The rule comes in response to the uptick in the number of fraudulent pro se trademark applications received by the USPTO; particularly from China.  The new rule mirrors similar requirements in other countries, such as the European Union and Japan.

What do you need to know about the new rule?

The final rule will go into effect on August 3, 2019, and applies to individuals and businesses whose permanent legal residence or principal place of business is outside of the United States.

The rule will also apply retroactively to pending applications filed with the USPTO prior to August 3rd.  Non-U.S. applicants with pending applications who have not retained U.S. counsel will be informed in an Office action that appointment of a qualified U.S. attorney is required.  The applicant will have the usual six-month period to respond to the Office action and identify U.S. counsel.  Failure to comply will result in abandonment of the application.

Additionally, U.S. attorneys representing clients in trademark matters before the USPTO will be required to confirm that they are an active member in good standing of their bar and to provide information concerning their bar membership, as well as other information.

What Next?

Foreign applicants are still allowed to directly file applications and continue prosecution matters with the USPTO without U.S. counsel until August 3rd.  However, foreign applicants should prepare for the rule change by retaining qualified U.S. counsel to prevent any prosecution interruptions at the USPTO.

 

Authored by Julia Matheson and David Brzozowski

 

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