Foreign trademark applicants must use US-qualified lawyers in the United States
What is the new rule?
To combat fraudulent submissions, the United States Patent and Trademark Office (USPTO) has passed a new rule: in all trademark matters before the USPTO, foreign-domiciled trademark applicants are required to use an attorney who is licensed to practise law in the United States (U.S.). This rule comes into effect on 3 August 2019.
Who does the new rule affect?
Any foreign-domiciled applicant, registrant or party will be affected by the rule. Being such a party means that you are:
An individual with a permanent legal residence outside the U.S. or its territories; and/or
An entity with its principal place of business (headquarters) outside the U.S. or its territories.
Consequence of the new rule
The effect of this new rule is that any individual or entity who is not primarily based in the U.S. must use a U.S.-licensed attorney as a representative in all USPTO trademark matters. For example, if you are based in Australia or the European Union, and wish to file a new U.S. trademark application, respond to a USPTO office action or be involved in Trademark Trial and Appeal Board proceedings, you must engage such an attorney.
How can we help?
We are licensed to practise law in the U.S. and can represent you in your trademark matters before the USPTO. We have active membership in good standing of the New York bar and are well-placed to assist you with your U.S. trademark matters.
Contact us now if you have queries regarding how you may protect or defend your trademark in the United States.
This article intends to outline some of the trademark issues that you may need to address with your legal counsel when protecting your trademark. It does not go into great depth with the subject matter, but offers useful insights into the basics. It is not legal advice and it is not exhaustive of all laws and issues that may apply to your particular business. Qualified legal counsel should review the details of your trademark protection in the relevant jurisdiction.