USPTO Announces New Rule Requiring US-Licensed Attorneys to Represent Foreign Applicants and Registrants

Background

In recent years, the USPTO has seen a significant increase in inaccurate and/or fraudulent submissions by pro se foreign applicants. According to the USPTO, such applicants frequently rely on inaccurate or incomplete information about the legal requirements for a trademark registration in the US, often resulting in submissions that violate the Lanham Act and/or the USPTO’s rules. The USPTO estimates the total number of such submissions to be in the tens of thousands. The USPTO’s attempts to identify misconduct, educate foreign applicants about unauthorized practices of law, and/or impose sanctions have purportedly been ineffective. The new rule comes as a further attempt to combat fraud, increase compliance, and safeguard the integrity of the US Trademark Register

The Rule

Effective August 3, 2019, all foreign-domiciled applicants, registrants, or parties to trademark proceedings must be represented by a US-licensed attorney.

Foreign-domiciled trademark applicants, registrants, and parties include: (i) any individual with a permanent legal residence outside the US and its territories; and (ii) any entity with its principal place of business (i.e. headquarters) outside the US and its territories.

As of the effective date, US counsel will be required to attest to their active membership in good standing of a bar of the highest court of a US state, commonwealth, or territory, and provide their name, postal address, email address, and bar membership information. This requirement applies to applications, post-registration maintenance documents, and TTAB proceedings.

Canadian patent agents will no longer be authorized to represent Canadian trademark applicants. Reciprocally recognized Canadian trademark attorneys and agents may be recognized as additionally appointed practitioners, but the USPTO will only correspond with the US-appointed attorney.

If an application is filed without complying with this new rule, the USPTO will issue an Office Action that appointment of a qualified US Attorney is required. The Applicant will have six months to respond and comply. Failure to comply will result in the abandonment of the application.

Third-parties who submit letters of protest regarding pending applications are not subject to the requirement of this rule to appoint US counsel. Foreign-domiciled applicants who file Madrid applications are subject to the requirement in all provisional refusals (i.e. Office Actions), but not in their initial application with the International Bureau of the World Intellectual Property Organization.

What Will Be Accepted Prior To The Effective Date?

Submissions filed by US counsel without their accompanying bar information will generally be accepted up until the effective date.

Applications and registrations filed by a non-US-licensed attorney prior to the effective date will be accepted so long as they are otherwise satisfactory. If a document submitted by a foreign applicant or registrant prior to the effective date requires no further action, the USPTO will not require the appointment of US counsel as to that filing. However, if an Office Action is subsequently issued, the Action will include the requirement for appointment of US Counsel.

A TTAB proceeding pending on the effective date that requires further action by the parties will be suspended, and the foreign party will be given a time frame by which it must obtain US counsel.

Prior to the effective date, submissions filed by Canadian trademark attorneys and agents will generally be accepted. Prior to the effective date, Canadian patent agents in good standing may continue to represent pending Canadian trademark applicants, registrants, and parties only in connection with an application or post-registration maintenance filings.

Takeaway

Effective August 3, 2019, all foreign-domiciled applicants, registrants, and parties to trademark proceedings will need to be represented by US-licensed counsel. While the USPTO will generally continue to accept submissions by non-US-licensed counsel prior to the effective date, foreign-domiciled entities should seek to retain US-licensed counsel if they anticipate participating in any trademark matters after the effective date.