Intellectual Property Law Knowledge Center

USPTO Announces New Trademark Rule Requiring Foreign Entities to be Represented by Qualified U.S. Attorney

July 30th, 2019

Philadelphia and Wilmington Trademark AttorneysBy Bridget H. Labutta

Effective August 3, 2019, the United States Patent and Trademark Office (“USPTO”) has amended its Rules of Practice in Trademark Cases to require foreign applicants, registrants, and parties to trademark proceedings before the USPTO’s Trademark Trial and Appeal Board to be represented by a qualified U.S. attorney.

This change is intended to maintain the integrity of the U.S. Trademark Register. It will instill greater confidence in the public that trademark filings are not subject to invalidation for reasons such as improper signatures or claims of use. It will also allow the USPTO to more effectively enforce compliance with all statutory and regulatory requirements in trademark matters.

This change is a direct response to the increasing problem of foreign trademark applicants and registrants who do not retain a qualified U.S. attorney and file inaccurate and possibly fraudulent submissions that violate the USPTO’s rules and/or U.S. trademark statutes.

The USPTO considers “foreign applicants, registrants, and parties” to be those whose domicile address is not located within the U.S. or its territories.

Foreign applicants, registrants, and parties must retain a qualified U.S. attorney to file any post-registration maintenance documents, submissions in Madrid applications, and TTAB proceedings.

A foreign applicant may file a new application but must later engage a qualified U.S. attorney to prosecute the application. This applies to applications filed under Section 1(a) [based on use], Section 1(b) [based on intent-to-use], Section 44(d) or (e) [based on foreign application or registration], and Section 66(a) [based on Madrid Protocol]. Certain Madrid applications may be exempt from this new rule, but in limited circumstances.

Canadian attorneys and agents may be reciprocally recognized to practice before the USPTO.

All Panitch Schwarze attorneys are qualified U.S. attorneys, who are active members in good standing of the bar of the highest court in the U.S. state in which they primarily practice. Contact us for further information at trademark@panitchlaw.com.

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