New Rule Requires U.S. Licensed Attorney for Foreign-domiciled Trademark Applicants and Registrants

In All, Intellectual Property by lowndestech

By: Jon Gibbs

Effective on August 3, 2019, the United States Patent and Trademark Office (USPTO) will require 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 U.S. The rule applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the U.S. and is intended to enhance compliance with regulations, accuracy of trademark submissions, and safeguard the integrity of the Trademark Register.

For purposes of clarity, outside of the United States includes Canadian applicants, registrants, and parties. Canadian patent agents will no longer be authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in trademark matters. Canadian trademark attorneys and agents, however, may continue, if eligible, to be recognized as additionally appointed practitioners who can represent their Canadian clients, although the USPTO will correspond only with the appointed U.S. licensed attorney.

In addition to foregoing, 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.

For more information about this change, please contact Jon Gibbs or a member of the firm’s Intellectual Property Services Group.