• October 30, 2019
  • Brent Sausser
  • 0

USPTO US Attorney Required for Foreign Filings

A change in federal trademark regulations requires foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (TTAB) proceedings to hire a U.S.-licensed attorney to represent them at the USPTO. The regulation took effect as of August 3, 2019. You can see the full regulation on the federal register by clicking here.

What Filings Does the Regulation Impact?

The USPTO issued the regulation in relation to all trademark proceedings with the USPTO and TTAB. Thus, if you are a foreign filer without a representing US attorney, and receive any Office action, or need to correspond with the USPTO regarding your application, you must have a US attorney.

  • USPTO requires a US licensed trademark attorney for foreign filers for the following:
    • Application filings after August 3, 2019
    • TTAB proceedings
    • Response to Office actions issued by Examiners
    • Any communication with Examiners, even if administrative responses (correcting description of goods/services, clarifying entity info, adding disclaimer, etc.)
    • Responding to renewal inquiries

Reason for the Requirement

The USPTO claims that a significant number of applications contained fraudulent and/or inaccurate information filed by foreign individuals and entities who were not authorized to represent trademark applicants, registrants, or parties before the USPTO (i.e., they are engaging in the unauthorized practice of law).

In essence, the USPTO claims there was rampant abuse of the USPTO filing system by foreign individuals submitting fraudulent claims for brands. The requirement to have a US licensed attorney will hopefully eliminate these fraudulent claims. 

  • To prevent fraudulent claims with the USPTO.
  • To reduce the number of individuals or entities attempting to file on behalf of others without being authorized to practice before the USPTO.

Who Does the Requirement Impact?

The new regulation impacts any foreign-domiciled owner, which is defined as follows:

  • an individual owner/holder who resides and intends their principal home to be outside the United States or its territories; or
  • a juristic owner/holder (such as a corporation or partnership) whose principal place of business (headquarters) where the entity’s senior executives or officers are located is located outside the United States or its territories.

What about Canadians?

Canada is no exception to the new regulation. This includes registered Canadian patent agents, who are no longer authorized to respond on behalf of Canadian applicants. Although, if you were listed as authorized Canadian attorney with reciprocal recognition prior to the effect of this regulation you can continue to represent the client in relation to that filing. However, if on or after the effective date of August 3, 2019 a US attorney must respond.

  • If filed prior to August 3, 2019 the Canadian agent can respond.
  • If filed on or after August 3, 2019 the Canadian agent cannot respond, rather a US attorney must also be appointed.

What if I File Without a US Attorney?

If a foreign address (i.e., any street address that is located outside of the United States and its territories) is listed as the domicile in any submission on or after August 3, 2019, and the applicant or registrant is not represented by a U.S. attorney, the examining attorney or post-registration specialist will issue an Office action that requires the applicant or registrant to appoint a U.S. attorney as its representative.

  • Examiner will issue an Office action requiring a US attorney be appointed.

What do I do If I get a Refusal?

Hire a US trademark attorney. The US attorney must provide the following:

  • Name, postal address, and email address
  • A statement attesting to their active membership in good standing of a bar of the highest court of a U.S. state, commonwealth, or territory
  • Attorney bar membership information (state, number if applicable, and year of admission).

If you’ve received such a rejection contact us, we can help.