This week the United States Patent and Trademark Office (USPTO) issued new Rules under Title 37 of the Code of Federal Regulations (CFR) Parts 2, 7, and 1. This new Rule[1] is effective August 3, 2019 and requires all foreign trademark owners, including 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.
A “foreign-domiciled” trademark applicant, registrant, or party is either or both: a) an individual with a permanent legal residence outside the United States or its territories; b) an entity with its principal place of business (headquarters) outside the United States or its territories. This requirement also applies to all Canadian applicants, registrants, and parties.
The USPTO has stated that a requirement for such foreign applicants, registrants, or parties be represented by a qualified United States attorney will instill greater confidence in the public with respect to trademark registrations owned by the foregoing and which have been issued by the USPTO. The USPTO has also stated that the new rules will also allow it to more effectively use available mechanisms to enforce compliance with statutory and regulatory requirements in trademark matters.
Frequently asked questions[2]:
Does this new rule affect me?
- If you are a Foreign-domiciled trademark applicant, registrant, and/or party to Trademark Trial and Appeal Board proceedings, including Canadian trademark filers, you must be represented at the USPTO by an attorney who is licensed to practice law in the United States.
- 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.
When is this new rule coming?
- This new rule becomes effective on August 3, 2019.
- The impact of the new rule will not immediately affect applications filed before August 3, 2019 or existing registrations that would have otherwise been impacted by the new rule. However, any foreign filing having a date before August 3, 2019 that becomes the subject of a USPTO office action that rejects the application thereafter will require the applicant to designate a United States attorney when responding.
- Similarly, current foreign trademark registrants will not need to designate a United States attorney until they file a Declaration of Use under Section 8 of the Lanham Act or an Application for Renewal under Section 9 of the Lanham Act.
- The general effect of the rule is that all filings after August 3, 2019 that are not in compliance with the new rule will receive a USPTO office action rejecting the application. Moreover, an online TEAS Plus application cannot even be submitted unless the domestic representative section of that online form is completed.
What are the goals of this new rule?
The new rule is intended to:
- Increase USPTO customer compliance with U.S. trademark law and USPTO regulations.
- Improve the accuracy of trademark submissions to the USPTO.
- Safeguard the integrity of the U.S. trademark register.
Why is this rule being put in place?
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.
This new rule affects me. What should I do?
Please contact us at trademarks@mchattielaw.com. The McHattie Law Firm has extensive experience and expertise with the law governing the creation, protection and infringement of trademarks. We would be happy to learn more about your trademarks and how we might be able to help you.
[1] The complete text of the rule is published here on Federal Register.