The USPTO is proposing to change the Trademark Rules of Practice to require that foreign applicants be represented by a U.S. licensed attorney. According to the announcement (here) a Notice of Proposed Rulemaking will be published on November 1, 2018, followed by a three-month comment period.
The proposed rule reads as follows: The United States Patent and Trademark Office (USPTO) proposes to amend its rules to require foreign trademark applicants and registrants to be represented by a U.S. licensed attorney, i.e. an attorney in good standing of the bar of the highest court of a State in the U.S. (including the District of Columbia and any Commonwealth or territory of the U.S.) to file trademark documents with the USPTO. A requirement that foreigners be represented by a U.S. licensed attorney will (i) ensure that the USPTO can effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters; (ii) provide greater confidence to foreign applicants and the public that registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims; and (iii) aid USPTO efforts to improve accuracy of the U.S. Trademark Register.
Why would the USPTO start requiring foreign applicants to have local U.S. counsel? In today’s world, about 9% of trademark filings at the USPTO come from China and many applicants from China are not properly following the rules of trademark specimen, required signatures, etc., in trademark applications. So it appears to myself (and many other practitioners) that this proposed rule is meant to curb those incorrect filings.
There are other questions – such as what happens when an entity files through the Madrid Protocol? Do those applicants need local U.S. counsel? (Frankly, I always recommend local counsel in the jurisdiction.) There is more to come, of course, since this rule is just proposed.
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