US-Licensed Attorneys Now Required for Foreign Trademark Registration Applicants

Detroit, Michigan Trademark Attorney: US-Licensed Attorneys Now Required for Foreign Trademark Applicants

new USPTO Rule
Image by Uki_71 from Pixabay

The US Patent & Trademark Office (USPTO) has issued a new rule requiring foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (TTAB) proceedings, including Canadian parties, to be represented by attorneys licensed to practice law in the United States.

The Rule becomes effective on August 3, 2019, and is intended to protect the US trademark register from inaccuracy and outright fraud.

The USPTO has observed that many problematic applicants originate with foreign individuals or entities not actually empowered to represent applicants at the USPTO (i.e., licensed to practice law in a U.S. state or the District of Columbia).

Detroit, Michigan Trademark Attorney: Canadian Agents and Attorneys Also Affected

Canadian patent agents and attorneys will no longer be able to represent Canadian trademark applicants or other parties before the USPTO. They will be able to act as “additionally appointed practitioners” who can represent Canadian clients—but the USPTO will correspond only with the also-appointed US lawyer.

Such “additionally appointed practitioners” will need to be reciprocally recognized by OED, but they will need to retain a US lawyer to file actual responses to USPTO office actions and other items.

Canadian patent agents will simply, after the effective date of the new rule, not be allowed to represent Canadian parties any longer.

Detroit Michigan Trademark Attorney: The Bottom Line

The bottom-line for foreign USPTO parties is that it is essentially that you collaborate with a knowledgeable US-based trademark registration lawyer for your US trademark applications.

Detroit, Michigan Trademark Registration Attorney John Hilla is  available to assist foreign USPTO registrants with their applications.

Please feel free to at 734) 743-1489 to schedule a free telephonic consultation.

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