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New Requirement for Foreign Companies Seeking Trademark Registration

Many foreign companies seeking to register trademarks in the United States may be unaware that a new rule requires foreign-domiciled applicants and registrants to have a U.S.-licensed attorney. While numerous countries worldwide have had similar requirements for decades, the United States previously allowed foreign entities to directly pursue trademark registration without the need for local counsel.

Rationale Behind the Rule

The U.S. Patent and Trademark Office’s (USPTO) Final Rule took effect on August 3, 2019. According to the USPTO, the new requirement is intended to slow the uptick in questionable foreign trademark applications. The USPTO also noted that requiring local counsel will help improve the quality of submissions to the USPTO.

In its Final Rule, the agency specifically noted that pro se foreign trademark applications have tripled in recent years. This uptick has been accompanied by an increasing number of foreign trademark applicants, registrants and parties filing inaccurate and possibly fraudulent submissions that do not comply with U.S. trademark law or the USPTO’s rules. 

“The USPTO has seen many instances of unauthorized practice of law (UPL) where foreign parties who are not authorized to represent trademark applicants are improperly representing foreign applicants before the USPTO,” the Final Rule states. “As a result, increasing numbers of foreign applicants are likely receiving inaccurate or no information about the legal requirements for trademark registration in the U.S., such as the standards for use of a mark in commerce, who can properly aver to matters and sign for the mark owner or even who the true owner of a mark is under U.S. law.” 

Requirements for Foreign Applicants

The new rule applies to applicants, registrants or parties to a trademark proceeding whose domicile is not located within the United States or its territories. An individual’s domicile is the place the person resides and intends to be the person’s principal home; meanwhile, an entity’s domicile is its principal place of business (headquarters) where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. 

These entities are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters. In addition, U.S.-licensed attorneys representing trademark filers must provide their name, postal address, email address, a statement attesting to their active membership in good standing of a bar of the highest court of a U.S. state, commonwealth or territory and information concerning their bar membership (state, number — if applicable — and year of admission).

Notably, the Final Rule eliminates reciprocal recognition of foreign patent attorneys and agents to practice before the USPTO in trademark matters. Accordingly, in any trademark matter where a reciprocally recognized foreign trademark attorney or agent is representing an applicant, registrant or party whose domicile is not in the United States, a qualified U.S. attorney must also be appointed as the applicant’s or registrant’s representative who will file documents with the USPTO and with whom the USPTO will correspond.

Limited Exceptions

The rule treats Canadian trademark applicants, registrants or parties slightly differently. Canadian patent agents are no longer authorized to represent Canadian trademark applicants, registrants or parties before the USPTO in new trademark matters. Canadian trademark attorneys and agents 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.

For foreign-domiciled applicants filing applications using the Madrid Protocol under Trademark Act Section 66(a), beginning at the time of any provisional (or other) refusal (office action) U.S.-licensed attorney representation will be required. Section 66(a) applicants file their initial application with the International Bureau of the World Intellectual Property Organization. The International Bureau transmits that application to the USPTO, and there is currently no ability to designate an attorney on the International Bureau’s forms.

Impact on Existing Proceedings

Applications, registrations and proceedings initiated before August 3, 2019, are still subject to the U.S. counsel requirement. Accordingly, once any prosecution, maintenance or other trademark filing is due or made, foreign entities must appoint a U.S. attorney. With regard to Trademark Trial and Appeal Board (TTAB) proceedings, the TTAB will generally suspend the proceeding and issue an order informing the foreign party of the need to retain a U.S.-licensed attorney and the deadline for compliance.

If the USPTO receives a trademark application filed by a foreign domiciliary that does not comply with the requirements of the new rule, the applicant will be informed in an office action that appointment of a qualified U.S. attorney is required. The applicant will have the current usual period of six months to respond to an office action. Notably, so long as local counsel is appointed before the six-month deadline, trademark applications will retain their initial filing date. Failure to comply will result in abandonment of the application.

Key Takeaways

The USPTO’s trademark rule represents a significant change for foreign entities. To avoid costly delays or other complications, trademark owners based outside the U.S. should promptly appoint an experienced U.S. trademark attorney.

Howard D. Bader serves as general counsel for clients in a wide range of industries on an international scale. With over three decades’ worth of legal experience, he has represented clients in numerous legal matters, including commercial litigation, intellectual property, bankruptcy and creditor’s rights and mergers and acquisitions. He can be reached at hbader@sh-law.com.

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