Video Blog 7: The United States Patent and Trademark Office adds new practice rule for registering trademarks from foreign applicants

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The United States Patent and Trademark Office (USPTO) announced on July 2, 2019 a new rule requiring all 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 United States.

The requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These applicants, registrants, and parties are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters.

Additionally, 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.

“Many other countries worldwide have had this requirement for decades,” said USPTO Commissioner for Trademarks Mary Boney Denison. “We believe that this new rule will help improve the quality of submissions to the USPTO.”

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 will 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.

This new rule becomes effective on August 3rd.

Here’s what the USPTO says about it:

“Businesses rely on the U.S. trademark register to make important legal decisions about their brands. In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants. We discovered an increasing number of foreign trademark applicants, registrants, and parties are filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law or the USPTO’s rules. Often, these submissions are made with the assistance of foreign individuals or entities not authorized to represent applicants at the USPTO.

Many countries already require local attorneys to represent applicants. A significant number of trademark offices around the world require foreign-domiciled applicants and registrants to obtain local counsel as a condition for filing papers with those trademark offices.”

Frankly, the phrase “possibly fraudulent submissions” refers to the growing number of Chinese submissions to the United States Patent and Trademark Office. One main issue of foreign filings are what we call the “trademark specimen.” The specimen must be an actual picture or photograph of the trademark on advertising or on products. Sadly, many foreign filings contain a computer-generated graphic of what a trademark would look like on advertising or on products. Those computer-generated graphics are insufficient for registration in the USPTO, but many more foreign filings are more suspect of having false trademark specimen than domestic filings.

This new rule means that any foreign person or business must use an attorney licensed in a state in the United States. This does mean more work for attorneys in the United States as those who want to apply for a U.S. trademark will need to seek one out.