On July 2, 2019, the United States Patent and Trademark Office (USPTO) announced a new rule requiring all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the United States. The requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. This new trademark rule has an effective date of August 3, 2019.
The USPTO said the new rules were aimed at cracking down on fraudulent trademark registration applications and improving the quality of submissions to the USPTO. Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu said, “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. This rule is a significant step in combatting fraudulent submissions.” “Many other countries worldwide have had this requirement for decades,” said USPTO Commissioner for Trademarks Mary Boney Denison. “We believe that this new rule will help improve the quality of submissions to the USPTO.”
Additionally, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters are required to confirm they are an active member in good standing of their bar and to provide their bar membership information. The unauthorized practice of trademark law before the USPTO is a serious matter and we will take appropriate actions if unauthorized practice is occurring. These actions may include:
- Rejecting application submissions that were improperly signed or authorized;
- Excluding individuals and entities from acting as an attorney, correspondent, signatory, or domestic representative in all trademark matters before the USPTO.
Employing any individual who is not authorized to practice before the USPTO to represent you in connection with your trademark application may:
- delay and prolong the trademark application examination process;
- lead to the abandonment of your application;
- jeopardize the validity of any resulting registration.
Therefore, all foreign-domiciled trademark applicants, registrants should be represented by an attorney who is licensed to practice law in the United States about trademark practice before the USPTO in order to obtain professional legal advice, avoid falling into the application trap, increase the possibility of registration, and better exercise the trademark right.
