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New Rule Requires Foreign-Domiciled Trademark Applicants to be Represented by U.S. Licensed Attorneys

July 19, 2019

On July 2, 2019, the United States Patent and Trademark Office (USPTO) announced an important rule change impacting foreign-domiciled companies and individuals.  Effective August 3, 2019, the USPTO will require all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (TTAB) proceedings to be represented by an attorney licensed to practice law in the United States.  The new requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States.

Before August 3, 2019, foreign-based individuals and companies could represent themselves before the USPTO in trademark applications, registrations, and TTAB proceedings.  This rule change brings the United States in line with countries such as Brazil, Chile, the People’s Republic of China, Israel, Japan, Jordan, Republic of Korea, Morocco and South Africa, as well as with the European Union’s Intellectual Property Office, which all require foreign applicants to designate a local attorney in connection with all trademark applications.

The new rule will not immediately impact applications filed before August 3, 2019 or existing registrations.  However, if an application filed before August 3, 2019 becomes the subject of an office action after August 3, 2019 the Applicant will be required to designate a US licensed attorney to respond to the Office Action. Similarly, registrants will not need to appoint a U.S. licensed attorney until they file declarations or renewal applications under Sections 8 and 9 of the Lanham Act after August 3, 2019.  Further, TEAS Plus applications will not be able to be submitted after August 3, 2019 without a U.S. licensed attorney. If trademark filings are not in compliance with this new rule, the USPTO will issue an Office Action. 

Of immediate concern are TTAB proceedings where a foreign-domiciled party is not currently represented by a U.S. attorney. In this case, the TTAB will suspend the proceeding and will require appointment of a U.S. attorney.

If you are a non-U.S. based individual or company whose permanent legal residence or principle place of business is outside of the United States, Shipman & Goodwin’s trademark team of licensed U.S. attorneys are available to serve your global and U.S. trademark needs. 

For questions regarding trademark matters in view of this new USPTO rule, please contact Glenn M. Cunningham, Catherine Intravia, or Taylor Curtis.

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